Appeal No. 2001-1880
Application No. 09/273,835
Claim Interpretation
Our appellate reviewing court stated in Panduit Corp. v. Dennison Mfg. Co.,
810 F.2d 1561, 1567-1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), cert denied, 481 U.S.
1052 (1987):
Analysis begins with a key legal question -- what is the invention claimed?
Courts are required to view the claimed invention as a whole. 35 U.S.C.
103. Claim interpretation, in light of the specification, claim language,
other claims and prosecution history, is a matter of law and will normally
control the remainder of the decisional process. [Footnote omitted.]
“Although words in a claim are generally given their ordinary and customary meaning, a
patentee may choose to be his own lexicographer and use terms in a manner other
than their ordinary meaning, as long as the special definition of the term is clearly
stated in the patent specification or file history.” Vitronics Corp. v. Conceptronic, Inc.,
90 F.3d 1576, 1582, 39 USPQ2d 1573, 1576 (Fed. Cir. 1996). To that end, we also
note that during ex parte prosecution, claims are to be given their broadest reasonable
interpretation consistent with the description of the invention in the specification. In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
Appellant urges that step (a) as claimed, “incorporating a stable, isotope labeled
form of one of the four nucleotide units of an oligonucleotide into the oligonucleotide
under investigation in place of the ordinary nucleotide therein, the other three types of
nucleotides in the oligonucleotide being unlabeled”, when read in view of the
specification, “requires the isotopic labeling of all of one type of atom in a chosen
nucleotide unit, for example, all of the carbon atoms. No atoms are introduced that do
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