Appeal No. 2001-0515
Application 08/926,358
the second paragraph of § 112 requires a determination of whether those skilled in the art
would understand what is claimed when the claim is read in light of the specification. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d 1081,
1088 (Fed. Cir. 1986) and cases cited therein.
In the present case, our difficulty with the language in claim 1 centers on the recitation
that the keel lies “in a medial-lateral plane” (emphasis added). A three dimensional object, such
as appellants’ keel, cannot be said to lie “in” a plane because, by definition (see Webster’s
Third New International Dictionary (G. & C. Merriam Company, 1971)), a plane is nothing
more than a dimensionless imaginary planar surface. It is not clear how appellants’ three
dimensional keel can lie in such an imaginary surface.
Appellants’ specification, as filed, is of no avail for interpreting the recitation that the
keel lies in a medial-lateral plane. The specification does not describe the keel as lying in or
even along any plane, let alone a medial-lateral plane. Furthermore, this claim limitation cannot
be interpreted as meaning that the keel lies along a medial-lateral plane because the keel is
tapered as shown in Figures 1 and 4 of appellants’ drawings (see page 10 of the specification)
to lie along a plane that intersects a medial-lateral plane at an acute angle, as we have
interpreted the term “medial-lateral plane” in note 5 supra. There also is no basis in the
specification as filed for interpreting this claim limitation to mean that the keel is somehow
symmetrical about a medial lateral plane. If in some way this claim limitation were interpreted to
mean that the keel lies along a medial-lateral plane, then the subject matter of claim 1 would
read on the Kinnett patent because the anterior face of Kinnett’s keel 27 lies along a medial-
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