Appeal 2007-1916
Application 10/753,113
must be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the embodiment.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d
1865, 1868 (Fed. Cir. 2004)(“Though understanding the claim language may be
aided by the explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). It is incumbent upon the
examiner to establish a factual basis to support the legal conclusion of obviousness.
In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
(“[R]ejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”). In so doing, the
examiner is expected to make the factual determinations set forth in Graham v.
John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). KSR Int’l Co. v.
Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007) (“While the
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