Appeal 2006-3287
Application 10/022,996
public generally, to lawyers or to judges, but, as section 112 says, to those
skilled in the art to which the invention pertains or with which it is most
nearly connected.”)). Thus, even where the claim language is facially
unambiguous, the PTO is still obligated to examine the entire patent
disclosure, since the specification can limit the apparent breadth of a claim.
Rowe v. Dror, 112 F.3d 473, 480, 42 USPQ2d 1550, 1554 (Fed. Cir.
1997)(finding that Rowe’s claims, when properly interpreted, required a
balloon angioplasty catheter capable of expanding radially and exerting
pressure on the plaque-encrusted walls of a surrounding blood vessel).
The majority is certainly correct in stating that where a patent
applicant intends to use a claim term in a manner which differs from its
ordinary meaning, the applicant is obligated to provide a clear definition of
that term in the Specification. However, the issue before us is not whether
Appellants have acted as their own lexicographers and attempted to use the
term “side by side” in a manner which differs from its ordinary meaning.
Rather, the issue raised in this appeal is whether one of ordinary skill in the
balloon catheter art would understand the term “side by side” as defining a
specific configuration1 which differs from the configuration, i.e., end to end
(or coaxial), shown in the applied prior art2. As explained by our reviewing
Court, the PTO's interpretation of claim terms should not be so broad that it
conflicts with the meaning given to identical terms in other patents from
1 “The Examiner has taken the claim term ‘side by side’ out of the context of
the art and has failed to define the term as it relates to the subject matter of
intravascular balloon catheters within the reading of the specification and
drawings of the patent application documents.” (Reply 4).
2 “Those skilled in the art would interpret Lam as showing balloon sections
positioned ‘end to end’ and not ‘side by side.’” (Reply 5).
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