Appeal No. 2004-0721
Application No. 09/401,409
It is a long standing legal principle that, during
examination proceedings, claims are to be given their broadest
reasonable interpretation consistent with the specification. In
re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir.
2000). However, it is important to recognize that, while claims
are to be interpreted in light of the specification and with a
view to ascertaining the invention, it does not follow that
limitations from the specification may be read into the claims.
Sjolund v. Musland, 847 F.2d 1573, 1581, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988). This is because it has been repeatedly held
that limitations from the specification are not to be read into
the claims. Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1325, 65 USPQ2d 1385, 1393 (Fed. Cir. 2003); E.I. Dupont de
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433, 7
USPQ2d 1129, 1131 (Fed. Cir.), cert. denied, 488 U.S. 986 (1988).
Concededly, there is sometimes a fine line between reading a
claim in light of the specification and reading a limitation into
the claim from the specification. Notwithstanding the potential
fineness of this line, it is reasonably clear in this case that
the appellants would have us cross it from the former to the
latter. This is because, while the appellants’ arguments speak
of reading the appealed claims in light of the specification, the
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