Interference No. 103,995 Paper 29
Morel v. Sekhar Page 34
(Paper 14, p. 4, ¶ 8), it is not apparent from either the disclosure of the ‘115 application or
its prosecution history that Sekhar claims 77-82 exclude coating compositions and
methods producing glassy or vitrified coatings. (“Where a specification does not require a
limitation, that limitation should not be read from the specification into the claims”
(emphasis in the original). Specialty Composites v. Cabot Corp., 845 F.2d 981, 987, 6
USPQ2d 1601, 1605 (Fed. Cir. 1988)). Moreover, claims are to be interpreted as broadly
as their terms reasonably allow consistent with a specification as it would be interpreted by
one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989). Finally, a broad interpretation is not inconsistent with the definition of “vitrify” as
interpreted by one of ordinary skill in the art (see n.2 above, p. 10).
Secondly, Sekhar argues in its opposition (Paper 21, p. 5) that
the granted claims of U.S. Patent 5,364,513 which issued from the parent
application of the ‘115 application, include the word “non-glassy” in addition
to words “sinter” or “sintering”. Therefore, it is clear that the applicants were
excluding from the claims something which they had described in the
application, i.e., a predominantly glassy phase coating, and were limiting
themselves, in light of the prior art presented, to claims directed to other than
predominantly glassy coatings.
We note that none of involved Sekhar claims 77-82 recite “non-glassy”, but all of these
claims recite a silicon compound.
Morel further relies on Dr. Laurent’s interpretation of Sekhar ‘513 and, by
implication, the ‘115 application to support its construction of Sekhar claims 77-82.
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