Monday, March 11, 2013

Mixed decision in Ex parte Field

From within Ex parte Field

As to the meaning of "comprising":

See CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d
1356, 1360 (Fed. Cir. 2007) (“In the patent claim context, the term
„comprising‟ is well understood to mean „including but not limited to‟.”).

As to preambles:

We agree with Appellants that the preambles of claims 13 and 16-18
are entitled to some weight in the interpretation of the claims; that is, the
claims should not be read to encompass all products comprising an elongate
shaft having the recited layers. See Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If the claim preamble, when
read in the context of the entire claim, recites limitations of the claim, or, if
the claim preamble is „necessary to give life, meaning, and vitality‟ to the
claim, then the claim preamble should be construed as if in the balance of
the claim.”).

The appellant prevailed on some dependent claims:

We affirm the rejection of claims 1, 4, 13, and 16-18 as anticipated by
Arterburn, and the rejection of claim 15 as obvious based on Arterburn and
Smith. Claims 3, 5-8, 12, and 14 fall with claims 1, 4, and 13 because they
were not argued separately. 37 C.F.R. § 41.37(c)(1)(vii).
We reverse the rejection of claims 9-11 as obvious based on Arterburn
and Bland.


Post a Comment

<< Home