Appeal No. 1997-2741
Application 08/213,873
Jessop Steel Co., 8 F.3d 1573, 1579, 28 USPQ2d 1652, 1657 (Fed. Cir. 1993),
we are aware of no authority saying that claims can be broadened beyond the
scope defined by the specification merely through attorney argument. We
therefore decline to accept Appellants’ unsupported assertion that a person of
ordinary skill in the art would know that ß-amyloid peptide is associated with
conditions in organs other than the brain.
Thus, when we read the claims in light of the specification, we conclude
that the scope of the properly construed claims is limited to a method of treating
a condition of the brain that is associated with ß-amyloid peptide. This is the
broadest reasonable meaning of the words in the claim, as they would be
understood by one of ordinary skill in the art, taking into account the
enlightenment that is afforded by Appellants’ specification. See In re Morris,
127 F.3d at 1054, 44 USPQ2d at 1027.
Having construed the claims, we can now turn to the issue of enablement.
When we do so, we conclude that proper interpretation of the claims has
effectively disposed of the enablement issue. The examiner has conceded that
the specification is enabling for inhibiting ß-amyloid peptide production in the
brain, and we have concluded that the scope of the claims is limited to treatment
of disorders of the brain. Therefore, the examiner’s position would appear to be
that the claims as we have construed them are enabled throughout their scope.
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