Appeal No. 2004-1206
Application No. 09/826,473
It is implicit in any review of the examiner’s anticipation
analysis that the claim must first have been correctly construed
to define the scope and meaning of any contested limitations.
See Gechter v. Davidson, 116 F.3d 1454, 1457, 43 USPQ2d 1030,
1032 (Fed. Cir. 1997). The examiner finds that the claimed
“packaging container” includes the cylindrical beverage cans
disclosed by Wolfe (Answer, pages 8-9) while appellants argue
that this term is limited to the “conventional corrugated
shipping containers or containers formed from paperboard” as set
forth on page 2, ll. 13-15, of the specification (Brief, page 4).
During ex parte prosecution, the claim language must be read as
broadly as reasonably possible, as it would have been understood
by one of ordinary skill in the art, enlightened by any
definitions or guidelines found in the specification. See In re
Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir.
1997); and In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701
(Fed. Cir. 1995). The relevant portion of appellants’
specification reads as follows (page 2, ll. 13-15):
The term “packaging container” should be read to
include conventional corrugated shipping containers or
containers formed from paperboard [underlining added].
Accordingly, we agree with the examiner that, given the broadest
reasonable interpretation, one of ordinary skill in this art
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