Appeal No. 2003-1788
Application No. 09/403,081
PAK, Administrative Patent Judge, dissenting-in-part:
I do not agree with the majority’s view that Gitman would
not have rendered the subject matter of claims 17, 18, 21, 23 and
24 anticipated within the meaning of 35 U.S.C. § 102 and would
not have rendered the subject matter of claims 2, 4 through 11,
13 through 15, 17, 18 and 22 through 24 obvious within the
meaning of 35 U.S.C. § 103. However, I agree with the majority’s
view that Gitman would not have rendered the subject matter of
claims 2, 4 through 11, 13 through 15 and 22 anticipated within
the meaning of 35 U.S.C. § 102(b). My reasons for this
determination follow.
I begin with the claim language. Gechter v. Davidson,
116 F.3d 1454, 1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3
(Fed. Cir. 1997). In proceedings before the U.S. patent and
Trademark Office, claims must be interpreted by giving their
words the broadest reasonable meanings in their ordinary usage,
taking into account the written description found in the
specification. In re Morris,127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). This rule does not allow appellants or
the majority to read the limitations or embodiments appearing in
the specification into the claims on appeal. Loctite, Corp. v.
Ultraseal, Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed. Cir.
1985)(“Generally, particular limitations or embodiments appearing
in the specification will not be read into the claims.”); In re
Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978), citing
In re Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551 (CCPA
1969)(“We have consistently held that no ‘applicant should have
limitations of the specification read into a claim where no
express statement of the limitations is included in the
claim.’”). It only requires that claim language be given the
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