Appeal No. 1997-4318
Application 08/469,806
(iv) being sufficiently unstable to shearing forces such that they break down and disperse
the pigment in the building materials substantially as if the pigment was not
microgranulated; and
(b) mixing the combination of building materials and microgranulates thereby subjecting the
combination to shearing forces which break down the microgranulates and intimately disperse
the pigment throughout the building materials to impart a final colour intensity to the building
materials.
The review of the examiner’s application of prior art to claims 13 and 264 necessarily entails the
interpretation thereof with respect to the microgranulate inorganic pigment composition, by giving the
claim terms the broadest reasonable interpretation consistent with the written description provided in
appellants’ specification as it would be interpreted by one of ordinary skill in this art . See In re Morris,
127 F.3d 1048, 1054-56, 44 USPQ2d 1023, 1027-29 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so, the limitations of the specification, or
any preferred embodiment or example therein, will not be read into the claims. See generally, Comark
Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186, 48 USPQ2d 1001, 1005 (Fed. Cir.
1998); In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994); In re Van
Genus, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993); Zletz, supra; In re
Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978); In re Prater, 415 F.2d 1393, 1404-05,
162 USPQ 541, 550-51 (CCPA 1969). In this respect, it is appellants’ burden to define the claimed
invention encompassed by the appealed claims in the specification. See Morris, 127 F.3d at 1055-56,
44 USPQ2d at 1029; see also PPG Industries Inc. v. Guardian Indus. Corp., 156 F.3d 1351,
1354-57, 48 USPQ2d 1351, 1353-56 (Fed. Cir. 1998) (Patentees “could have defined the scope of
the phrase ‘consisting essentially of’ for purposes of its patent by making clear in its specification what it
regarded as constituting a material change in the basic and novel characteristics of the invention. The
question for our decision is whether PPG did so.”). The term “substantially” is a term of degree for
which the specification must either provide a definition or some standard of measurement for the claim
term that it modifies, or that term will be given its ordinary meaning. See Morris, supra; York Prods.,
4 Appellants do not state in their brief (see page 4) whether the appealed claims do not “stand or fall
together.” Thus, we decide this appeal based on appealed claims 13 and 26. 37 CFR §
1.192(c)(7) (1995).
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