Appeal No. 1997-0436
Application 08/277,692
In order to consider the issues in this appeal involved with the application of Seiki to the
claimed invention encompassed by appealed claim 1, we first must determine the invention
encompassed by this claim as it stands before us, mindful that we must give the broadest reasonable
interpretation to the terms thereof consistent with appellants’ specification as it would be interpreted by
one of ordinary skill in this art. See, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997). We find that consistent with the “Summary of the Invention” and the example in
the specification (pages 8 and 14-15), claim 1 is directed to “an oil prepared by esterification of a
polyoxyethylene . . . [of] formula (I) . . . with at least one polycarboxylic acid compound . . . and at
least one monocarboxylic acid compound . . . ” (emphasis supplied), wherein the polycarboxylic and
monocarboxylic acids are further defined in the claim with respect to carbon atoms content. We further
find that one of ordinary skill in this art would have recognized from the disclosure in the specification
(pages 8-10 and 14-15) that the product-by-process language thus employed in claim 1 specifies that
the claimed “oil” is the esterified product from the reaction of a polyhydric polyoxyethylene alcohol of
“formula (I)” with polycarboxylic and monocarboxylic acids, and thus is a mixture of esters. See In re
Thorpe, 777 F.2d 695, 697-98, 227 USPQ 964, 966 (Fed. Cir. 1985). Indeed, such a mixture would
comprise reaction products wherein at least one of the hydroxy functional moieties of the polyhydric
polyoxyethylene alcohol compound is esterified by a polycarboxylic acid compound, thus resulting in,
e.g., ester compounds containing at least one acid moiety having a carboxy functional group and ester
compounds wherein a di-acid moiety links two polyoxyethylene alcohol moieties.
In arriving at our interpretation of claim 1, we recognize that the preamble of this claim recites
“[a] compound suitable for use as a compressor lubricant.” However, when considered in the context
of the claimed invention as a whole, including consideration thereof in light of the specification, we find
that this limitation is not necessary to characterize the specified “oil” reaction product in order to give
meaning to claim 1 and properly define the invention. See generally In re Fritch, 972 F.2d 1260,
1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing Perkin-Elmer Corp. v. Computervision
Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed. Cir.), cert. denied, 469 U.S. 857 [225 USPQ
792] (1984), Corning Glass Works v. Sumitomo Elect. U.S.A., Inc., 868 F.2d 1251, 1257, 9
USPQ2d 1962, 1966 (Fed. Cir. 1989), In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071,
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