Appeal No. 1999-0551 Page 8
Application No. 08/636,431
CATHERINE TIMM, Administrative Patent Judge, dissenting.
While I concurr with my colleagues with regard to the reversal of the decision of the Examiner
to reject claims 1, 4, and 5 under 35 U.S.C. § 102(e) as being anticipated by Yamamoto, I do not
agree with their reversal of the Examiner’s obviousness rejections. I believe that the majority has too
narrowly interpreted the phrase “a second membrane in communication with said outer surface for
preventing particulate matter from penetrating into said sidewall from the inner surface” (3 clause ofrd
claims 1 and 5).
My colleagues state the following in their opinion:
The phrase “in communication with the inner surface is a second membrane
which prevents particulate matter from penetrating into the sidewall from
the inner surface” when read in light of the specification must be construed
to be that the second membrane prevents particulate matter from
penetrating the entire inner surface. To construe otherwise would defeat
the purpose of the invention as described in the specification. (See pages 1
to 3 and Figures 3 and 4.)
“During patent examination, the pending claims must be interpreted as broadly as their terms
reasonably allow." In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). It
is improper to read limitations from the specification into the claims. Id. See also In re Hyatt, 211
F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed. Cir. 2000). "Generally, particular limitations or
embodiments appearing in the specification will not be read into the claims." Enercon GmbH v. ITC,
151 F.3d 1376, 1384, 47 USPQ2d 1725, 1731 (Fed. Cir. 1998)(quoting Loctite Corp. v. Ultraseal
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