Appeal No. 1999-0551 Page 9
Application No. 08/636,431
Ltd., 781 F.2d 861, 867, 228 USPQ 90, 93 (Fed. Cir. 1985)). An interpretation which is broad but
not unreasonable is proper. See In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1668 (Fed.
Cir. 2000)(“The specification, although lengthy, contains no definition of ‘shared’ or ‘sharing’ that
would require the Board to construe those limitations in the narrower manner asserted by Mr. Hyatt.
The Board's interpretation of those terms, although broad, is not unreasonable.”).
In the present case, the Examiner’s interpretation is broad, but not unreasonable. The
Examiner interprets the claims as encompassing filter elements in which a second membrane is in
communication with some part, but not the entire, inner surface. I agree that the claims do not require
that the membrane extend along the entire length of the inner sidewall. Claims 1 and 5 call for the
sidewall to have an inner surface which allows a gas to flow through (first clause) and a second
membrane in communication with the inner surface for preventing particulate matter from
penetrating into the sidewall from the inner surface (third clause). The second membrane need only be
“in communication” with the inner surface at some point. Nothing in claim 5 rises to a requirement that
the inner membrane extend the entire length of the inner surface of the sidewall.
My colleagues state that to construe the claims as encompassing structures in which the inner
membrane does not cover the entire inner surface “would defeat the purpose of the invention as
described in the specification.” I cannot agree that the purpose described in the specification is a
necessary element of the claimed invention. The claim is drawn to an apparatus. “Claims drawn to an
apparatus must distinguish from the prior art in terms of structure rather than function.” In re Danly,
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