Appeal No. 1996-0200
Application 08/119,444
After careful consideration of the rejections before us, the above cited prior art, the
arguments presented by appellants and the examiner, we reverse the above rejections.
I.
The decisional process begins with an analysis of a key legal question --what is the
invention claimed? Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567,
1 USPQ2d 1593, 1597 (Fed. Cir. 1987). “Claim interpretation, in light of the specification,
claim language, other claims, and prosecution history, is a matter of law and normally will
control the remainder of the decisional process” (footnote omitted) Id. And thus, claim
interpretation is a threshold inquiry. In In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983) the court held:
It is axiomatic that, in proceeding before the PTO, claims in an application
are to be given their broadest reasonable interpretation consistent with the
specification. In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550
(CCPA 1969), and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In
re Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194 (CCPA 1977)
[emphasis added].
It is entirely proper to use the specification to interpret what an applicant meant by a
word or phrase in the claim. E.I. Du Pont 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).
The PTO applies to the verbiage of the proposed claims the broadest reasonable
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