BAI et al v. LAIKO et al - Page 18




                Interference No. 104,745                                                                                                 

                so as to give one of  ordinary skill in the art notice of the change.  See Intellicall, Inc., v.                         
                Phonometrics, Inc.,  952 F.2d 1384, 1387-88,  21 USPQ2d 1383, 1386 (Fed. Cir. 1992).").  In                              
                our view, the specification's definition of "ambient pressure" as "refer[ring] to the existing                           
                pressure within the enclosure of the AP-MALDI apparatus" can be understood as an intent to                               
                direct the reader's attention to the location of the ambient-pressure region of interest in Bai's sole                   
                disclosed embodiment, which has an ionization enclosure.  Nor does the fact that this sole                               
                embodiment employs an ionization chamber constitute sufficient reason for reading the                                    
                ionization chamber into the count.  See Taskett v. Dentlinger, 344 F.3d 1337, 1340, 68 USPQ2d                            
                1472, 1475 (Fed. Cir. 2003) ("According to Taskett, interpretation of the term “financial                                
                authorization”must be limited by the specification. Though it is true that we must read a claim in                       
                light of the specification, rarely will we limit the claim to the preferred embodiments described                        
                in that specification.  Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1325,                                 
                [65 USPQ2d 1385, 1392-93] (Fed. Cir. 2003).").   Therefore, even when "atmospheric-pressure"                             
                is construed in light of Bai's disclosure,  it is evident from the disclosure and the plain meaning                      
                of "atmospheric-pressure" that that term does not imply the presence of a surrounding enclosure.                         
                Under these circumstances, it would be improper to consider the parties' expert testimony on this                        
                question.  Vitronics, 90 F.3d at 1582, 39 USPQ2d at 1577.                                                                
                        In any event, we agree with Bai that assuming the Bai count alternative does require an                          
                atmospheric-pressure ionization enclosure, this requirement would be satisfied by an                                     
                atmospheric-pressure laboratory room containing the ionization apparatus and the spectrometer.                           



                                                                 - 18 -                                                                  





Page:  Previous  11  12  13  14  15  16  17  18  19  20  21  22  23  24  25  Next 

Last modified: November 3, 2007