Appeal No. 95-2830
Application No. 07/967,617
WARREN, Administrative Patent Judge, Concurring:
I concur with the panel’s decision to reverse the decision of the examiner based on the record
before us. I particularly note that the bridging moiety taught by Pedrazzi contains the triazinyl group
and links two chromophoric moieties. Thus, there is no similarity in structure or function between the
triazinyl containing bridging moiety of the compounds of Pedrazzi and the bridging moiety used to link a
fiber reactive moiety to a single chromophoric moiety in the compounds of Yokogawa. See In re
Payne, 606 F.2d 303, 315, 203 USPQ 245, 254-55 (CCPA 1979), and cases cited therein. I also
concur that this decision carries with it the reversal of the ground of rejection based on the judicially
created doctrine of obviousness-type double patenting.
I further concur in the panel’s decision to remand this case to the examiner for the examiner’s
consideration of Yokogawa alone with respect to the appealed claims. It is my view that appealed
claims 1, 2 and 5 through 9, which contain the formula member definition “Z is a fiber reactive group,”
are prima facie anticipated by the compounds disclosed by Yokogawa within the meaning of 35
U.S.C. § 102(e) and prima facie obvious under 35 U.S.C. § 103 over other teachings of this
reference. It is well settled that a reasonable interpretation must be given to the terms of an appealed
claim consistent with appellant's specification as it would be interpreted by one of ordinary skill in this
art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz,
893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so, the terms in the
appealed claim must be given their ordinary meaning unless another meaning is intended by appellants.
See, e.g., Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029 (“It is the applicants’ burden to
precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted]. ”); York
Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73, 40 USPQ2d 1619,
1622 (Fed. Cir. 1996), and cases cited therein (a claim term will be given its ordinary meaning unless
appellant discloses a novel use of that term); Zletz, supra (“During patent prosecution the pending
claims must be interpreted as broadly as their terms reasonably allow. When the applicant states the
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