Appeal No. 1997-0186
Application No. 08/314,568
We agree with the statement of law that "in proceedings
before the PTO, claims in an application are to be given their
broadest reasonable interpretation consistent with the
specification." In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983). However, having read the
specification in its entirety, we conclude that the broadest
reasonable interpretation of "alkoxy silane" is, by
appellants' own definition, a compound "of the formula
R Si(OR') with n ranging, for example, from 0 to 3, where R
n 4-n
and R' are also alkyl (e.g., C to C alkyl)." See1 6
Specification, p. 5, lines 14-16.
In the event that our views relating to this issue of
claim interpretation were held to be incorrect, claim 1 would
necessarily be broader than claim 5, and a question under 35
U.S.C. § 112, second paragraph, would arise relating to the
metes and bounds of the invention of claim 1. An examination
of the specification illustrates this point. First, in the
"Summary of the Invention," the compound at issue is described
reaching decision contrary thereto).
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