Appeal No. 95-1622
Application 07/890,593
Rather than reiterate the respective positions advanced by the examiner and appellants, we refer
to the examiner’s answer and to appellants’ principal and reply briefs for a complete exposition thereof.
Opinion
We begin our consideration of the grounds of rejection by determining the scope of appealed
claims 2 and 24. It is well settled that the terms of a claim must be given the broadest reasonable
interpretation consistent with appellants’ specification as it would be interpreted by one of ordinary skill
in this art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re
Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so, the terms in the
appealed claims must be given their ordinary meaning unless another meaning is intended by appellants.
See, e.g., Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029 (“It is the applicants’ burden to
precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”); York
Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73, 40 USPQ2d 1619,
1622 (Fed. Cir. 1996), and cases cited therein (a claim term will be given its ordinary meaning unless
appellant discloses a novel use of that term); Zletz, supra (“During patent prosecution the pending
claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined with that meaning, in order
to achieve a complete exploration of the applicant’s invention and its relation to the prior art.”).
However, while we refer to the specification to determine the meaning of a particular word or phrase
recited in a claim, we will not read into the claim limitations that are found only in the specification. In re
Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978), citing In re Prater, 415 F.2d 1393, 1405,
162 USPQ 541, 551 (CCPA 1969) (“We have consistently held that no ‘applicant should have
limitations of the specification read into a claim where no express statement of the limitation is included
in the claim.’”); see also E.I. du Pont de Nemours v. Phillips Petroleum Co., 849 F.2d 1430, 1433,
7 USPQ2d 1129, 1131 (Fed. Cir. 1988).
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