Appeal No. 2000-1176
Application 08/928,902
Our consideration of the examiner’s application of prior art to appealed claims must, of
course, begin with interpreting the language of the claims in light of the written description 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.”); In re Zletz, 893 F.2d 319, 321-
22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989) (“During 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. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (before the
application is granted, there is no reason to read into the claim the limitations of the
specification.).” In doing so, we will give the terms used in the claims their ordinary meaning
unless another meaning is intended by appellant as established in the written description of the
specification. See, e.g., Morris, supra; Zletz, supra.
It is clear from the written description in the specification (page 6, lines 5-7) that the term
“ceramic green sheet” has its recognized meaning in the art as a sheet of ceramic material that
has not been “fired.” It is also clear from the plain language of the preamble and the body of
appealed claims 1 and 17 that this term represents the substrate that is acted upon by the “at least
one slitting wheel inside at least one heating zone,” and thus there is no claim language that can
be construed as an “intended use” as alleged by the examiner. See generally, Corning Glass
Works v. Sumitomo Elect. 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). It is further
clear that one of ordinary skill in this art would interpret the term “heating zone” to mean a zone
in which the ceramic green sheet is specifically heated.
2 Answer, pages 4-7. The ground of rejection under 35 U.S.C. § 112, second paragraph, is
withdrawn by the examiner (answer, page 2).
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