Appeal No. 2004-1926
Application 09/714,670
furnace in the presence of a bright annealing atmosphere clearly
is a process limitation.
The examiner argues (answer, pages 8-9):
While Zaremski does discuss oxide, and in fact uses the
electrolytic treatment to remove oxide, the amount of
oxide in the Zaremski process can clearly be defined as
“limited” within the meaning of the term as in the
Handbook of Metal Treatments definition, i.e., it is
limited to an amount which can be removed by a
prescribed electrolytic process. Lovejoy is
particularly concerned with producing a “bright surface
quality” and a “bright annealed-like surface” without
the need for controlling the atmosphere. This clearly
fits within the Handbook of Metal Treatments definition
of the term “bright” annealing. Kiyo discloses several
different annealing procedures, and provides specific
examples of steel annealed under those procedures
followed by an electrolytic treatment substantially as
presently claimed, and which result in a product that
is completely descaled with favorable luster. Such
procedures would fall within the Handbook of Metal
Treatments definition of “bright” annealing. Given
that the definition of bright annealing has no defined
limits upon the atmosphere used or the specific end
result of a bright annealing treatment, and given that
the prior art either specifically states that one
obtains a surface similar to a bright annealed surface
(Lovejoy), a descaled surface with favorable luster
(Kiyo), or a product with the scale completely removed
(Zaremski), the examiner’s position is that whatever
annealing procedures are set forth in the prior art
fall within the definition of “bright” annealing as
generally known in the art and as recited in the
appealed claims.
“It is a well-established axiom in patent law that a
patentee is free to be his or her own lexicographer [citation
omitted], and thus may use terms in a manner contrary to or
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