Appeal No. 1998-0261
Application No. 08/438,319
Claims are to be given their broadest reasonable interpretation during prosecution, and the
scope of a claim cannot be narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550
(CCPA 1969).
While an applicant may be his own lexicographer, during prosecution words are interpreted
using their common, ordinary meanings unless the applicant has clearly defined them differently. See In
re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994)(repeating the principle
that where an inventor chooses to be his own lexicographer and gives terms uncommon meanings, he
must set out the uncommon definition in the patent disclosure). See also Beachcombers Int’l, Inc. v.
WildeWood Creative Prods., Inc., 31 F.3d 1154, 1158, 31 USPQ2d 1653, 1656 (Fed. Cir.
1994)("As we have repeatedly said, a patentee can be his own lexicographer provided the patentee's
definition, to the extent it differs from the conventional definition, is clearly set forth in the
specification."); Zletz, 893 F.2d at 321, 13 USPQ2d at 1322, “[D]uring patent prosecution when
claims can be amended, ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.”
In the instant case, although appellants’ specification refers to a particular arrangement of read
and write heads in disclosed embodiments as making up particular “modules,” the claims are not so
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