Appeal No. 1999-0700 Page 7
Application No. 08/590,580
The Patent and Trademark Office applies to the verbiage of the claims the broadest
reasonable meaning of the words in their ordinary usage as they would be understood by one
of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the applicant's
specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
Moreover, an applicant can be his own lexicographer provided the applicant's definition, to the
extent it differs from the conventional definition, is clearly set forth in the specification.
Beachcombers Int’l, Inc. v. Wild Wood Creative Prods., Inc., 31 F.3d 1154, 1158, 31 USPQ2d
1653, 1656 (Fed. Cir. 1994).
In the instant case, as discussed above, the definition of "recycled fiber sludge" is
clearly set forth in the appellant's specification and the examiner has erred in refusing to apply
this definition in interpreting the claim language. As the standing 35 U.S.C. § 102 rejection of
claims 1-4, 6-8 and 10-23 rests in part on the examiner's interpretation of "recycled fiber
sludge" as including sludge from waste water derived from any paper manufacturing process,
we are constrained to reverse this rejection.
The obviousness rejections
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection,
the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts
that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction
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