Appeal No. 2005-0308
Application 09/934,349
677-78, 7 USPQ 1315, 1317 (Fed. Cir. 1988); Lindemann Maschinenfabrik GMBH v. American
Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984). Thus, we again
consider the record as a whole with respect to this ground of rejection in light of appellants’
rebuttal arguments in the brief. See generally, In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d
1655, 1657 n.3. (Fed. Cir. 1990).
Appellants submit that “[t]he present invention includes a number of features that are
unanticipated in [Vanselow],” listing five features that are allegedly not found in the reference
(brief, page 5).
We interpret appealed claim 1 by giving the terms thereof their broadest reasonable
interpretation in light of the written description in appellants’ specification, including the
drawings, as it would be interpreted by one of ordinary skill in this art, without reading into the
claims any limitation or particular embodiment disclosed in the specification. See In re Morris,
127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Priest, 582 F.2d 33, 37, 199 USPQ 11,
15 (CCPA 1978). It is well settled that applicants’ mere intent as to the scope of the claimed
invention does not so limit the scope of a claim which is otherwise definite when construed in
light of the specification as it would be interpreted by one of ordinary skill in the art. In re
Cormany, 476 F.2d 998, 1000-02, 177 USPQ 450, 451-53 (CCPA 1973).
It is apparent from the plain language of appealed claim 1 that the third and fifth argued
features, that is, “[t]he ability to use the base with a standard drinking mug” and “a flexible
resistive type heater . . . ” (brief, page 5), are not stated limitations in this claim as it stands on
appeal. Accordingly, while such features can be present in a heated coffee mug which otherwise
contains all of the required limitations of the claim in view of the transitional term “comprising,”
see generally, Vehicular Technologies Corp. v. Titan Wheel Int’l Inc., 212 F.3d 1377, 1383,
54 USPQ2d 1841, 1845 (Fed. Cir. 2000); Genentech Inc. v. Chiron Corp., 112 F.3d 4954, 501,
42 USPQ2d 1608, 1613 (Fed. Cir. 1997); In re Baxter, 656 F.2d 679, 686 210 USPQ 795, 802
(CCPA 1981), there is no requirement that a heated coffee mug meeting the stated limitations of
the claim must also have the third and fifth argued features.
- 3 -
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007