Appeal No. 2002-0836 Page 4
Application No. 09/264,437
According to the examiner, who refers in particular to Figure 14, Carpenter’s
electrode (conductor) 204 is broadly interpreted as an electrically conductive heater
element (answer, page 5). Appellants (brief, page 3) contest the examiner’s position in
this regard.
While it is true that the claims in a patent application are to be given their
broadest reasonable interpretation consistent with the specification during prosecution
of a patent application (see, for example, In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989)), it is also well settled that terms in a claim should be
construed as those skilled in the art would construe them (see Specialty Composites v.
Cabot Corp., 845 F.2d 981, 986, 6 USPQ2d 1601, 1604 (Fed. Cir. 1988) and In re
Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA 1977)). In this case, while
the examiner is correct that Carpenter’s electrodes (e.g., conductor 204 in Figure 14
alluded to by the examiner) do conduct electricity and will incidentally give off some
degree of heat as the result of the passage of current therethrough, one of ordinary skill
in the art would have understood from Carpenter’s disclosure with regard to the relative
resistivities of the electrodes and the salt water that Carpenter seeks to minimize the
dissipation of power through the electrodes and would not have considered the
electrodes themselves to be “heater elements.” Accordingly, we find ourselves in
agreement with appellants that Carpenter’s electrodes do not respond to the heater
elements recited in claim 1.
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