Ex Parte WALTHER - Page 2


               Appeal No. 2001-0856                                                                                                   
               Application 09/143,947                                                                                                 

               effective amount of a solvent blowing agent boiling in the range of from 40 to 60°C, and                               
               applying heat to form and cure the composition.                                                                        
                       The reference relied on by the examiner is:                                                                    
               Spek et al. (Spek)                            4,833,173                              May 23, 1989                    
                       The examiner has rejected appealed claims 1 through 5 and 8 through 15 under 35 U.S.C.                         
               § 103(a) as being unpatentable over Spek.1                                                                             
                       Appellant states in the brief (page 3) that the appealed claims “stand or fall together.”                      
               Thus, we decide this appeal based on appealed claim 1.  37 CFR § 1.192(c)(7) (2000).                                   
                       We affirm.                                                                                                     
                       Rather than reiterate the respective positions advanced by the examiner and appellant, we                      
               refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition                      
               thereof.                                                                                                               
                                                              Opinion                                                                 
                       Our consideration of the examiner’s application of prior art to appealed claim 1 must, of                      
               course, begin with interpreting the language of the claims in light of the written description in                      
               appellant’s 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                               

                                                                                                                                     
               1  The examiner has withdrawn the grounds of rejection under 35 U.S.C. § 103(a) over Snider,                           
               Liman and Horn (answer, page 2).  See the Office action of November 11, 1999 (Paper No. 7).                            

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