Appeal No. 1996-3814 Page 12
Application No. 08/348,835
866-67, 228 USPQ 90, 93 (Fed. Cir. 1985); See also In re
Zletz, 893 F.2d at 321, 13 USPQ2d at 1322; In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (before
an application is granted, there is no reason to read into the
claim the limitations of the specification).
As set forth by our appellate reviewing court in E.I.
duPont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d
1430, 1433, 7 USPQ2d 1129, 1131 (Fed. Cir.), cert. denied, 488
U.S. 986 (1988):
It is entirely proper to use the specification
to interpret what the patentee meant by a word or
phrase in the claim. See, e.g., Loctite Corp. v.
Ultraseal Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93
(Fed Cir. 1985). But this is not to be confused
with adding an extraneous limitation appearing in
the specification, which is improper. By
“extraneous,” we mean a limitation read into a claim
from the specification wholly apart from any need to
interpret what the patentee meant by particular
words or phrases in the claim. “Where a
specification does not require a limitation, that
limitation should not be read from the specification
into the claims.” Speciality Composites v. Cabot
Corp., 845 F.2d 981, 987 (Fed. Cir. 1988) (emphasis
in original), citing Lemelson v. United States, 752
F.2d 1538, 1551-52, 224 USPQ 526, 534 (Fed. Cir.
1985)[emphases added].
The reason for not reading limitations from the
specification into the claims was articulated in SRI Int’l v.
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