Appeal 2007-2577
Application 90/006,344
depends on claim construction. The question is a close one, depending
heavily on the understanding of those in the art.27
The evidence we have for how those skilled in the art would
understand "permanently connect" in this context is the Prazoff
specification, the Lin patent, and a dictionary definition Prazoff has
supplied. From Prazoff, one of skill would understand "permanently
connect" to mean "securely affix" and to include molding the connectors to
their respective rope lights.28 Lin explains how the connectors are attached
to the respective rope lights,29 but does not describe a situation in which the
connectors are removed from the rope lights. This omission is remarkable
since Lin does address disassembly of connectors from each other, removal
of power plugs, and removal of a protective cylinder.30 Thus, one of skill
would understand that while the connectors could be removed, Lin does not
intend the connectors to be removed from the rope lights once they have
27 We are aware of precedent holding that "permanently affixed" meant
"unremovable". K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1363,
52 USPQ2d 1001, 1004 (Fed. Cir. 1999) (affirming a trial court
construction). We are also aware, however, of the pitfalls inherent in
extending constructions from infringement cases to claims before the Office.
Morris, 127 F.3d at 105_, 44 USPQ2d at 1029 (explaining the differences
between claim construction in court infringement actions versus agency
patentability determinations). Ultimately, claim construction must be
anchored in the understanding of those in the particular art at issue. K-2
Corp., 191 F.3d at 1363, 52 USPQ2d at 1006.
28 Spec. 3:49-63.
29 Lin 3:58-4:32.
30 Lin 3:58-63 and 4:41-55. The antecedent for "removal and disassembly"
cited in the brief (at 23) is "light". Lin 1:11-18. Lin expects the user to
connect and disconnect the rope lights from each other. As noted in the text,
Lin does not indicate that the connectors are ever to be removed from the
rope lights.
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