Appeal No. 1999-0712 Page 10
Application No. 08/748,669
of Schatz, as modified in view of Wolff, is an "eyelet" as broadly claimed. While it may be
true that eyelets frequently comprise closed or substantially closed rings, the broadest
reasonable meaning of the term "eyelet" does not appear to require this and the appellants'
specification does not set forth any express definition of "eyelet." Therefore, the examiner's
position that each of the coiled connecting members of Schatz is an "eyelet" strikes us as
reasonable.5
With regard to the limitation in claim 42 that the radiopaque marker be "positioned in
said eyelet," the appellants argue that no one skilled in the art would consider a coating
material, such as paint, positioned "in" the eyelet "unless, of course, the paint extended across
and filled the central opening of the eyelet" and that the only reasonable understanding of the
relationship between the paint and the eyelet is that the paint is "on" the eyelet, not "in" the
eyelet (brief, page 11). We do not agree. The term "in" is generally understood to mean
contained or enclosed by, inside or within and does not, as we see it, require that the marker6
extend across or fill the central opening of the eyelet. While radiopaque coating material coated
on the inner radial surface of the coiled connector member may, as the appellants suggest, be
considered to be positioned "on" the member by virtue of its contact with the surface thereof,
5 See Morris, 127 F.2d at 1056, 44 USPQ2d at 1029.
6 Webster's New World Dictionary, Third College Edition (Simon & Schuster, Inc. 1988)
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007