Appeal No. 1997-0186
Application No. 08/314,568
KRATZ, Administrative Patent Judge, dissenting-in-part.
I concur with the majority’s disposition of the
examiner’s stated rejections as maintained on appeal.
However, I disagree with the introduction of a new ground of
rejection of claim 5 under 35 U.S.C. § 112, fourth paragraph
pursuant to the provisions of 37 CFR § 1.196(b).
In my view the alkoxy silane of claim 1 is not limited to
alkoxy silanes of the formula of claim 5 and, hence, claim 5
does further limit the subject matter of claim 1.
It is well established that “[d]uring patent examination
the pending claims must be interpreted as broadly as their
terms reasonably allow.” In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Sneed, 710 F.2d
1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983)(“It is
axiomatic that, in proceedings before the PTO, claims in an
application are to be given their broadest reasonable
interpretation consistent with the specification.”)
Nevertheless, it is imperative that claim limitations or
embodiments appearing in the specification not be read into
the claims. Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861,
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