Ex parte SCOTT et al. - Page 8

          Appeal No. 96-1931                                                           
          Application 07/995,635                                                       

          prior art.  Thus, appellants= argument that Sulcs teaches away               
          from using the oxide coating is not relevant because Sulcs still             
          suggests that such an article was known in the prior art.                    
          Appellants= argument that the coating in Sulcs is not                        
          continuous as claimed is also not persuasive.  Claims are to be              
          given their broadest reasonable interpretation during prosecu-               
          tion.  In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed.            
          Cir. 1989); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550             
          (CCPA 1969).  It is improper to narrow the scope of the claim by             
          implicitly reading in disclosed limitations from the specifica-              
          tion which have no express basis in the claims.  See Id.  Thus,              
          appellants= attempt to interpret the claims as requiring a                   
          continuous coating over an entire surface of the tube is based               
          upon the disclosed invention rather than the clear language of               
          the claims.  We note that it would be a simple matter for appel-             
          lants to amend the claims to require this specific narrower                  
          reading of the claims.                                                       
          In our view, each of the coatings in Sulcs over the                          
          respective end caps of the arc tube is a continuous coating over             
          the portion of the arc tube which it covers.  When claims 5, 8               
          and 14 are given their broadest reasonable interpretation, it is             
          seen that a surface of the tube in Sulcs is continuously coated              


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007