Appeal No. 2002-1123
Application No. 09/110,987
319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)(“During
patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow.”); In re Yamamoto, 740
F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984)(“The PTO
broadly interprets claims during examination of a patent
application since the applicant may ‘amend his claim to obtain
protection commensurate with his actual contribution to the
art.’”)(quoting In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ
541, 550 (CCPA 1969)).
In the present case, appealed claim 1 recites: “wherein the
base member defines an area of at least 40 square inches to
permit placement of the palmar surface of an average adult human
hand thereagainst to be covered by the flexible, stretchable
film.”2 Although the claim requires the base member to define an
area of at least 40 square inches, it does not recite any
limitation with respect to whether the defined area of the base
member must accommodate the entire palmar surface of an “average
2 We note that the “at least 40 square inches” limitation
was inserted by amendment after the filing of the present
application. (37 CFR § 1.111 (2000) amendment filed Jan. 24,
2000, paper 8.) In the event of continued prosecution, the
examiner should consider whether the amended claim complies with
the written description requirement of 35 U.S.C. § 112, ¶1. Cf.
In re Wertheim, 541 F.2d 257, 263, 191 USPQ 90, 97 (CCPA 1976)
(holding that “at least 35%” was not described in a foreign
priority document disclosing “25-60%”).
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007