Appeal No. 2001-1880
Application No. 09/273,835
not normally occur, and not atoms are attached to a nucleotide.” Brief, pages 7-8.
We are mindful that it is “improper to add extraneous limitations to a claim, that is
limitations added wholly apart from any need to interpret what the patentee meant by
particular words or phrases in a claim.” Amgen v. Hoechst Marion Roussel, Inc., 314
F3d 1313, 1393, 65 USPQ2d 1385 (Fed. Cir. 2003). Courts must take extreme care
when ascertaining the proper scope of the claims, lest they simultaneously import into
the claims limitations that were unintended by the patentee. See, e.g., Hoganas AB v.
Dresser Indus., Inc., 9 F.3d 948, 950, 28 USPQ2d 1936, 1938 (Fed. Cir. 1993).
However, it is also well settled that the claims are best understood in light of the
specification of which they are a part. In the present case, appellant urges that, when
the claims are read in view of the specification, the term “stable isotope-labeled form”
takes on a specific meaning. In our view, when the claims are read in view of the
specification as elucidated by the prosecution history, they require that all of one type of
atom in a chosen nucleotide unit, for example, all of the carbon atoms, be labeled with
an isotope, consistent with appellant’s interpretation. Appellant argues (Brief, page 8)
that a “measurement according to the present invention involving less than all of a
chosen element having been replaced by its isotopic form would not yield results that
could be readily analyzed to yield the number of particular nucleotides present in an
oligonucleotide.” Because the claimed invention would not yield results that could be
readily analyzed if appellant's claim interpretation is not accepted, we find it reasonable
to interpret that the claimed invention as supported by the specification, requires all of
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