Appeal No. 1998-2733
Application 08/718,613
We affirm the ground of rejection over Ukai and Knobel but reverse the ground of rejection
over Pierce.
Rather than reiterate the respective positions advanced by the examiner and appellants, we refer
to the examiner’s answer and to appellants’ brief for a complete exposition thereof.
Opinion
The review of the grounds of rejection of the appealed claims involving the application of prior
art necessarily entails the interpretation of the claimed painted object as encompassed by appealed
claim 10. The interpretation of the scope of the appealed claim requires that the broadest reasonable
interpretation must be given to the terms thereof consistent with the written description provided in
appellants’ specification as it would be interpreted by one of ordinary skill in this art, see In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he PTO applies to the
verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.”), without reading into these claims any limitation or particular
embodiment which is disclosed in the specification. See In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989) (“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. See In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).”); In re Priest, 582 F.2d 33, 37, 199
USPQ 11, 15 (CCPA 1978). Thus, the terms in the appealed claims must be given their ordinary
meaning unless another meaning is intended by appellants as established in the written description of
their specification. See, e.g., Morris, supra; Zletz, supra. When the specification does not contain an
express definition, a reasonable, supported interpretation of the appealed claims that differs from that
urged by applicants can be used to determine the patentability of the claims. Morris, 127 F.3d at
1055-56, 44 USPQ2d at 1028-30 (“Absent an express definition in their specification, the fact that
appellants can point to definitions or usages that conform to their interpretation does not make the
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