Appeal No. 1997-0186
Application No. 08/314,568
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 noted in the majority opinion, dimethoxydiphenyl
silane is listed in the specification (p. 5) as a
representative compound. That compound is obviously embraced
by the generic alkoxy silane language of claim 1, but not
embraced by the formula of claim 5. Unlike the majority, it
is my view that a skilled artisan would not dismiss the
listing of the exemplified dimethoxydiphenyl silane as a
distortion of the meaning of “alkyl” in the formula furnished
on page 5 of the specification. Indeed, the majority’s
interpretation of claim 1 could be characterized as the
genesis of the perceived distortion. A dimethoxydiphenyl
silane would be understood by one of ordinary skill in the art
as an alkoxy silane. Based on a reading of the specification
as a whole as it would be interpreted by one of ordinary skill
in the art, it is clear that the formula introduced on page 5
of the specification is but one description of the disclosed
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