Appeal 2007-4310
Application 10/950,830
172 USPQ 524, 526 (CCPA 1972) (emphasis original). Similarly, for
claimed subject matter to be obvious, the differences required by the claim
limitations must be such that they are described or obvious, as a whole, in
view of the prior art. The Gillette Co. v. S.C. Johnson & Son, Inc., 919 F.2d
720, 724, 16 USPQ2d 1923, 1927 (Fed. Cir. 1990) (“Focusing on the
obviousness of substitutions and differences, instead of on the invention as a
whole, is a legally improper way to simplify the often difficult determination
of obviousness.”) On appeal, the procedural burden is on the Applicant to
show that the Examiner has committed reversible error in maintaining the
rejections.
We begin by considering the meaning of the limitations "consisting
essentially of a single layer of scrim," recited in claim 18, and "comprising a
single layer of scrim," recited in claim 19. The transitional phrases
"comprising" and "consisting essentially of" are, as the Examiner noted,
open to additional materials and structures beyond those recited in the
claims, the latter with certain reservations not relevant here. The Examiner
errs, however, in reading these claims as being open to additional layers of
scrim. To read these claims in that manner would render nugatory the
express limitation, "a single layer of scrim". Although claims are to be read
broadly during prosecution, so the full scope and content of their meaning
may be explored while the applicant has a full and fair opportunity to amend
them, In re Zlezt, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989), nonetheless every word must be given due consideration. In the
present case, the 830 Application makes clear that the inventor is concerned
with embodiments based on a single scrim layer. The Examiner has not
identified any ambiguity in the claim language or any conflict with the
12
Page: Previous 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 Next
Last modified: September 9, 2013