Ex Parte ZHAO et al - Page 5




          Appeal No. 2003-0267                                                        
          Application 09/427,229                                                      


          limitation in independent claim 9, requiring “a bonding surface             
          having a plurality of grooves therein.”  The examiner (see pages            
          3 and 4 in the answer) finds that these limitations read on                 
          Jabbari’s locking flanges 200 and 202 and the indentations 208,             
          210 and 212 therein.  The appellants counter that                           
              [a] groove is commonly understood to take the form of an                
              elongate, channel-like structure, such as those                         
              illustrated in Figs. 2-5, 8 and 9 of the present                        
              specification.  For example, one dictionary defines a                   
              groove as “a long narrow furrow or channel.” American                   
              Heritage Dictionary 600 (3rd ed. 1993).  Jabbari                        
              discloses only elements 208, 210 and 212 . . .  .                       
                   These indentations are described by Jabbari in                     
              column 5, lines 63-65 as “molded cutouts, or                            
              indentations” in top and bottom surfaces of an actuator.                
              Indentations so arranged cannot reasonably be construed                 
              as “grooves,” [brief, page 3].                                          
              During patent examination claims are to be given their                  
          broadest reasonable interpretation consistent with the underlying           
          specification without reading limitations from the specification            
          into the claims.  In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ            
          541, 550-51 (CCPA 1969).  The definition of “groove” proffered by           
          the appellants (“a long narrow furrow or channel”) conforms with            
          the underlying specification and fairly represents the ordinary             
          and accustomed meaning of this term.  This definition also fairly           
          describes Jabbari’s indentations 208, 210 and 212, which are                
          disclosed as having a semi-circular shape of approximately 0.062            
          inches in diameter or a trapezoidal shape with a height of 0.040            

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