Appeal No. 2004-1334
Application 09/526,457
appealed claims 5 and 15 under 35 U.S.C. § 103(a) as being unpatentable over Fortune in view
of Ellis (id., pages 3-4).1
Appellant states that the appealed claims “do not stand or fall together” (brief, pages 5-6)
and presents arguments with respect to appealed claims 8, 9, 14 and 15. Thus, we decide this
appeal based on appealed claims 5, 8, 9, 14 and 15. 37 CFR § 1.192(c)(7) (2002).
We affirm the ground of rejection of claims 3, 6, 8, 11, 12 and 14 and reverse the second
ground of rejection of claims 5 and 15. Accordingly, the examiner’s decision is affirmed-in-part.
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief for a complete exposition thereof.
Opinion
In order to apply the prior art to appealed claims 8, 9, 14 and 15, the language thereof
must be interpreted by giving the claim terms their broadest reasonable interpretation consistent
with the written description provided in appellant’s specification as it would be interpreted by
one of ordinary skill in this art, without reading into these claims any limitation or particular
embodiment which is disclosed in the specification. See In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever enlightenment by
way of definitions or otherwise that may be afforded by the written description contained in the
applicant’s specification.”); In re Donaldson Co., 16 F.3d 1189, 1192-95, 29 USPQ2d 1845,
1848-50 (fed. Cir. 1994) (in banc); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989) (“During patent prosecution the pending claims must be interpreted as broadly
as their terms reasonably allow. When the applicant states the meaning that the claim terms are
intended to have, the claims are examined with that meaning, in order to achieve a complete
exploration of the applicant’s invention and its relation to the prior art. See In re Prater, 415
F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).”).
Where claim language recites “means for” a specified function, this claim language must
be considered to determine if the strictures of 35 U. S. C. § 112, sixth paragraph, apply. If the
1 In the Answer (pages 3), the examiner states that the grounds of rejection are set forth in Paper
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