Appeal No. 2002-0181
Application No. 08/476,497
Further, claims 1 through 7, 16, 18, 21, and 22 on appeal
stand rejected under 35 U.S.C. § 102(b) as anticipated by
Toibana. (Id. at pages 4-5, misnumbered pages 2-3.)
We reverse these rejections and remand the application for
further proceedings not inconsistent with this decision.
Rejection under 35 U.S.C. § 112, ¶2
With respect to claim 19, the examiner states: “It is clear
from applicants [sic] remarks and the instant disclosure that
elemental silicon fibers are not intended but fibers of silicon
compounds, which said compounds are not considered to be
encompassed by the claimed terminology ‘silicon fibers’.”
(Answer, unnumbered page 3.)
It is well settled, however, that an inventor can be his
own lexicographer and even give terms uncommon meanings provided
that the specification contains sufficient notice to one of
ordinary skill in the art. In re Paulsen, 30 F.3d 1475, 1480,
31 USPQ2d 1671, 1674, (Fed. Cir. 1994); Cf. Hormone Research
Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 1563, 15
USPQ2d 1039, 1043 (Fed. Cir. 1990) (“It is a well-established
axiom in patent law that a patentee is free to be his or her own
lexicographer...and thus may use terms in a manner contrary to
or inconsistent with one or more of their ordinary meanings.”)
(citation omitted).
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