Appeal No. 2004-1704
Application No. 10/225,994
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)
(before the application is granted, there is no reason
to read into the claim the limitations of the
specification). The reason is simply that during
patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed.
Burlington Industries, Inc. v. Quigg, 822 F.2d 1581,
1583, 3 USPQ2d 1436, 1438 (Fed. Cir. 1987); In re
Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.
Cir. 1984). The issued claims are the measure of the
protected right. United Carbon Co. v. Binney & Smith
Co., 317 U.S. 228, 232, 55 USPQ 381, 383-84 (1942)
(citing General Electric Co. v. Wabash Appliance
Corp., 304 U.S. 364, 369, 37 USPQ 466, 468-69
(1938)). An essential purpose of patent examination
is to fashion claims that are precise, clear, correct,
and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during
the administrative process.
In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed.
Cir. 1989).
Applying these legal principles, we find that neither the
express language of appealed claim 1 nor the present
specification limits the face of the backing plate to only one
face per side. Absent such a limitation in the claim or a clear
disavowal in the specification, we are required to construe “a
second face” as recited in appealed claim 1 to encompass or read
on stepped face 15A as disclosed in Takanashi’s Figure 2.
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