Appeal No. 2002-1992
Application 09/206,170
Industries Inc., 299 F.3d 1336, 1344, 63 USPQ2d 1769, 1772 (Fed.
Cir. 2002) (“The words of the claims themselves define the scope
of the invention, and are given their ordinary and customary
meaning, unless the patentee has chosen to use terms in some
other manner.”) The ordinary meaning of “optionally” is: “1.
left to one’s choice; not mandatory. 2. leaving something to
choice.”1 Thus, the appellants’ claims 19 and 20 leave the
presence of each component following “optionally” open to choice,
i.e., the claims encompass methods in which the component
following any appearance of “optionally” is present and methods
in which the component following any appearance of “optionally”
is absent. The examiner has not explained, and it is not
apparent, why the fact that the claims encompass methods in which
the components following “optionally” can be either present or
absent renders the claims indefinite. See Ex parte Wu, 10 USPQ2d
2031, 2032 (Bd. Pat. App. & Int. 1989) (“We have no difficulty
determining the scope of claim 1 as drafted. The composition set
forth in the claim can consist of the first three components
recited or it can include a polyamine as a fourth component. We
therefore do not consider the claims to be indefinite as a result
1 The Random House College Dictionary 934 (Random House
1973).
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