Appeal 2006-2686
Application 09/994,495
surface 36 does not meet the claimed limitation of having a “‘surface
adapted to individually seal of [sic] each of the first end openings’” (id.).
Appellants state that the term “seal” is both implicitly and explicitly defined
in the specification as meaning that a sample is sealed in a device “such that
it does not evaporate or leak from the device” (id.). Appellants further rely
on a technical reference definition of “seal” to mean “any device or system
that creates a non-leaking union between two mechanical or process-system
elements” (id.).
“Under 35 U.S.C. § 102, every limitation of a claim must identically
appear in a single prior art reference for it to anticipate the claim.
In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).”
Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030, 1032 (Fed.
Cir. 1994). Implicit in our review of the Examiner’s anticipation analysis is
that the claim must first have been correctly construed to define the scope
and meaning of each contested limitation. Gechter, supra, citing
In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).
The Patent and Trademark Office determines the scope of the claims in
patent applications not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed.
Cir. 2005)(en banc), quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004). “[T]he specification
‘is always highly relevant to the claim construction analysis. Usually, it is
dispositive; it is the single best guide to the meaning of a disputed term.’
[Citation omitted].” Phillips v. AWH Corp., supra.
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