Appeal No. 2002-1080 13
Application No. 09/372,149
examiner contends (answer, page 3) that McCarthy’s footwear responds to this claim
requirement when given its broadest reasonable interpretation because the sole follows
the contour of the user’s foot when looked at from above the foot.
While it is true that terms in a claim are to be given their broadest reasonable
interpretation in proceedings before the PTO, this interpretation must be consistent with
the specification and the claim language should be read in light of the specification as it
would be interpreted by one of ordinary skill in the art. See Sneed, 710 F.2d at 1548,
218 USPQ at 388. Given appellant’s disclosure at page 4, lines 19-26, that the foot
protector conforms to the three-dimensional contours of the sole of the foot as shown in
appellant’s Figure 2, the examiner’s interpretation of the claim terminology “easily
conforms to a bottom surface of a wearer’s foot” is simply not reasonable. This is
especially so given appellant’s comments in the reply brief, page 12, penultimate
paragraph, concerning the intended meaning of the claim terminology. In short, we can
think of no circumstances under which the artisan, consistent with the appellant’s
specification, would construe the “easily conforms to a bottom surface of a wearer’s
foot” terminology in the manner asserted by the examiner. This being the case, we
shall not sustain the standing rejection of claim 9 as being unpatentable over McCarthy
in view of Guarrera.4
4In the event of further prosecution, the examiner should consider whether
adhesive device 20 of McCarthy, which comprises a cloth layer coated with adhesive
(continued...)
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