Appeal No. 95-4682
Application 08/107,536
in this art, we conclude that one of ordinary skill in this art would have concluded from the
definition specified in appellant=s specification (pages 3-4) that the term Adrilling fluid@ appearing
in appealed claim 1 must be interpreted as a Awater-based drilling mud.@ In re Morris, 127 F.3d
1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); 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); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). supra
(ADuring patent examination 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.@). We further conclude that, as a matter of
claim construction, the phrase A[a] drilling fluid composition@ in appealed claim 1, when
considered in the context of the claimed invention as a whole, including consideration thereof in
light of the specification, must be given weight as a claim limitation which characterizes the
claimed composition in order to give meaning to the claims and properly define the invention. See
generally In re Fritch, 972 F.2d 1260, 1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing
Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed.
Cir.), cert. denied, 469 U.S. 857 [225 USPQ 792] (1984)), Corning Glass Works v. Sumitomo
Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel,
828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
Thus, because the applied prior art does not disclose or suggest fluid compositions that
contain components such that they can be fairly characterized as a Adrilling fluid,@ each and every
element of the appealed claims is not taught or suggested by the prior art. Accordingly, the
examiner has not established a prima facie case under either ' 102(b) or ' 103.
The examiner=s decision is reversed.
Reversed
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