Appeal No. 2003-1390
Application No. 08/989,342
markings. Id.
The examiner argues that the molded marks of Hinkes
necessarily have some thickness. Examiner’s answer, page 16.
Thus, giving the claims their broadest reasonable interpretation,
the present claims read on Hinkes’ template. See id.
Although the examiner is correct that claims are given the
broadest reasonable interpretation during patent prosecution,
this interpretation must also be consistent with the
specification. See In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ
934, 936 (Fed. Cir. 1984). In reviewing the specification, it is
readily apparent that in using the term “two-dimensional design”
appellant intends to distinguish over templates used to create
symbols, letters and lines such as are used to mark highways and
game courts. See specification, page 2, line 8-18. Accordingly,
we are in agreement with appellant that a template used to create
a two-dimensional marking does not anticipate the claimed
template for creating a three-dimensional design.
The rejection is reversed.
2. Rejection of claims 1, 14-17 and 22-24 under 35 U.S.C.
§ 102 as anticipated by Lopez
Like Hinkes, Lopez is directed to a template for applying
two-dimensional markings. See, e.g, Lopez, col. 2, lines 32-34
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