Appeal No. 2004-2161 Page 5
Application No. 10/028,875
by the appellants in their application the first section of the bendable piece of material is
attached directly to the second body. However, during examination before the Patent
and Trademark Office, the pending claims in an application must be interpreted as
broadly as their terms reasonably allow, without reading any limitations from the
specification into the claims, for during prosecution, when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored, and
clarification imposed. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322
(Fed. Cir. 1989). If the limitations in the specification were required to be read into the
claims there would be no need for claims and no basis for the requirement of 35 U.S.C.
§112 that the specification conclude with claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention. Sjolund v.
Musland, 847 F.2d 1573, 1580, 6 USPQ2d 2020, 227 (Fed. Cir. 1988).
The appellants’ arguments not being persuasive, it is our conclusion that claim 1
reads on the apparatus disclosed in Figures 24 and 24A of Beals, and therefore the
reference anticipates the claim. The rejection of claim 1 is sustained.
This rejection applies to a group of claims and 37 CFR § 1.192(c)(7) requires an
appellant to do two things in order to have the claims within each group separately
considered for patentability purposes: (1) provide a statement that the claims do not
stand or fall together; and (2) explain why the claims are separately patentable. While
the appellants have stated that the claims do not stand or fall together, they have not
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