Appeal No. 96-3533
Application 08/203,624
In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he PTO
applies to the verbiage of the proposed 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.”), without reading into these claims any limitation
or particular embodiment which is disclosed in the specification. See In re Zletz, 893 F.2d 319, 321-
22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989), citing In re Prater, 415 F.2d 1393, 1404-05, 162
USPQ 541, 550-51 (CCPA 1969); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978),
citing Prater, 415 F.2d at 1405, 162 USPQ at 551. Thus, the terms in the appealed claims must be
given their ordinary meaning unless another meaning is intended by appellants as established in their
specification. See, e.g., Morris, supra; Zletz, supra (“During patent prosecution the pending claims
must be interpreted as broadly as their terms reasonably allow. When the applicant states the meaning
that the claim terms are intended to have, the claims are examined with that meaning, in order to achieve
a complete exploration of the applicant’s invention and its relation to the prior art. [Citations omitted.]”).
When the specification does not contain an express definition, we can arrive at a reasonable, supported
interpretation of the appealed claims that differs from that urged by applicants and determine the
patentability of the claims on that basis. Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1028-30
(“Absent an express definition in their specification, the fact that appellants can point to definitions or
usages that conform to their interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.”). Therefore, “[i]t is the applicants’
burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”
Morris, supra.
We did not specifically interpret all or any part of the phrase “fibers are uniformly dispersed in
the resin” (emphasis supplied) appearing in the first specified step of claim 1 in our original opinion.
We did interpret the transitional term “comprising” in the preamble to “open the claimed method to
include other steps,” on the authority of In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03
(CCPA 1981) (opinion, page 4). We further interpreted the phrase “coating material comprising fibers
and resin” in view of the open-ended term “comprising” to
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