Appeal 2007-2173
Application 09/682,701
costs associated with the manufacture of components of an item (Finding of Fact
8).
We have no clear definition of what is meant by the claimed “value chain”
and “supply tier,” and we decline to speculate as to their meanings. It is the
Appellants’ burden to precisely define the invention, not the PTO’s. In re Morris,
127 F.3d 1048, 1056 (Fed. Cir. 1997). Although a patent applicant is entitled to be
his or her own lexicographer of patent claim terms, in ex parte prosecution it must
be within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant must
do so by placing such definitions in the Specification with sufficient clarity to
provide a person of ordinary skill in the art with clear and precise notice of the
meaning that is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed.
Cir. 1994) (although an inventor is free to define the specific terms used to
describe the invention, this must be done with reasonable clarity, deliberateness,
and precision; where an inventor chooses to give terms uncommon meanings, the
inventor must set out any uncommon definition in some manner within the patent
disclosure so as to give one of ordinary skill in the art notice of the change).
In addition to certain terms used in the independent claims being vague or
indefinite, the phrasing of certain portions of the claims is also difficult to
understand. In particular, the independent claims require that the item, for which a
value chain is output by the system or method, is selected by the computing device
based on one or more constituent component(s) of the item(s) and supply tier. It is
not clear from either the wording of the claim or the Appellants’ Specification how
the computing device selects the item based on components and a supply tier. It is
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: September 9, 2013