Appeal No. 2003-1501
Application 09/756,929
In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990); In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
With respect to several issues raised by appellant, we interpret appealed claims 43, 47 and
53 mindful that we must give the language thereof the broadest reasonable interpretation in light
of the written description in appellant’s specification as it would be interpreted by one of
ordinary skill in this art. See, e.g., In re Thrift, 298 F.3d 1357, 1364, 63 USPQ2d 2002, 2006
(Fed. Cir. 2002); In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so,
we will not read any limitations of the specification, or any preferred embodiment or example
therein, into the claim unless there is basis in the claim or specification to do so. See generally,
Morris, supra; Zletz, supra; In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978);
In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969). When the
specification does not contain an express definition, a reasonable, supported interpretation of the
appealed claims that differs from that urged by appellant can be used to determine the
patentability of the claims. Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1028-30 (“Absent an
express definition in their specification, the fact that appellants can point to definitions or usages
that conform to their interpretation does not make the PTO’s definition unreasonable when the
PTO can point to other sources that support its interpretation.”). Thus, “[i]t is the applicants’
burden to precisely define the invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute
omitted].” Morris, 127 F.3d at 1055-56, 44 USPQ2d at 1029.
Appellant submits several arguments on the basis that Rigali does not disclose plasma
treating “an encapsulated object” workpiece by a plasma treating apparatus which has a structure
that satisfies the claim limitations with respect to “an enclosure” as required by appealed claim
43 (brief, e.g., pages 6, 7 and 11; reply brief, e.g., pages 2, 5 and 6). The involved limitations are
“an encapsulated object,” “an enclosure for housing an encapsulated object” and “a source of
plasma gas, coupled to said enclosure, for exposing the encapsulated object in said enclosure to
plasma gas.”
We find that the term “encapsulated object” can be reasonably interpreted in light of the
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