Appeal No. 2004-1926
Application 09/714,670
inconsistent with one or more of their ordinary meanings. For
this reason, an analysis of the specification and prosecution
history is important to proper claim construction.” Hormone
Research Foundation Inc. v. Genentech Inc., 904 F.2d 1558, 1563,
15 USPQ2d 1039, 1043 (Fed. Cir. 1990).
The appellant states in the specification that “[a]s used
herein the bright annealed stainless steel refers to stainless
steel that has been annealed in an inert atmosphere and
preferably in a hydrogen atmosphere” (page 8, lines 23-25). The
appellant’s argument regarding the meaning of “bright annealing”
is consistent with the specification (brief, page 4). The
examiner erred by not interpreting “bright annealing” in the
appellant’s claims consistently with the meaning of that term as
set forth in the specification.
Because the examiner has not established that Zaremski,
Lovejoy or Kiyo discloses, or would have fairly suggested, to one
of ordinary skill in the art, 1) bright annealing a stainless
steel article as the term “bright annealing” is used by the
appellant, i.e., annealing in an inert atmosphere, and
2) thereafter treating the article with an electrolyte, the
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007