Interference No. 103,854
may even be drafted by the patent examiner in an examiner’s amendment (subject to
the approval of the inventor’s solicitor). While presumably the inventor has approved
any changes to the claim scope that have occurred via amendment during the
prosecution process, it is not unusual for there to be a significant difference between
what an inventor thinks his patented invention is and what the ultimate scope of the
claims is after allowance by the PTO. Solomon v. Kimberly-Clark Corp., 2000 U.S.
App. LEXIS 15317, 55 USPQ2d at 1283-84, quoting Markman v. Westview
Instruments, Inc., 52 F.3d 967, 985, 34 USPQ2d 1321, 1335 (Fed. Cir. 1995) (en
banc), aff’d, 517 U.S. 370, 38 USPQ2d 1461 (1996).
Thus, in construing a claim we must look to the “claims, the written description, and, if in
evidence, the prosecution history.” Elkay Mfg. Co. v. Ebco Mfg. Co., 192 F.3d 973, 976-77,
52 USPQ2d 1109, 1111 (Fed. Cir. 1999).
We turn first to the words of the claim itself. Bell Communications Research, Inc. v.
Vitalink Communications Corp., 55 F.3d 615, 619-20, 34 USPQ2d 1816, 1819 (Fed. Cir.
1995). To that end, we point out that the words used in the claims are given their ordinary
and accustomed meaning unless it appears from the patent and the file history that the terms
were used differently by the inventors. Intellicall Inc. v. Phonometrics, Inc., 952 F.2d 1384,
1387-88, 21 USPQ2d 1386-87 (Fed. Cir. 1992). Here, when we turn to the dictionary for the
ordinary and accustomed meaning of the term “encapsulated” we find that it means
“enclosed by a protective coating or membrane.”10 However, when we look to the portion of
the specification relied upon by Wallach (col. 10, lines 12-24) to understand the meaning of
the phrase “encapsulated in a liposome,” and to ascertain whether the term “encapsulated”
was employed in its ordinary sense, or used differently by the inventors, we do not find any
reference to the contested term. Thus, we do not find any definition or written description of
“encapsulated” which corresponds to the dictionary meaning of the term, or otherwise, in
Wallach’s specification. Accordingly, in the case before us, we do not find that reading the
10 Websters II, New Riverside University Dictionary, The Riverside Publishing Co.
(1988), p. 429.
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