Appeal No. 2005-0789
Application No. 10/410,000
that claim 1 is open to an interpretation wherein the claimed
concentration of an electrolyte is not the total concentration
of any and all supporting electrolyte; rather, it can be the
concentration of one supporting electrolyte, and that other
supporting electrolytes can be in the plating solution, having
other concentrations. Answer, pages 6-7.
The examiner finds that Bickford teaches a plating solution
comprising 0.0014M HCl, and that therefore Bickford anticipates
claim 1. Answer page 7.
Appellants respond to this rejection on pages 3-4 of the
brief. Appellants argue that the express language of claim 1,
and the specification, both indicate that claim 1 requires that
the plating solution contains a supporting electrolyte having a
total concentration of “up to about 0.4M”. In the reply brief,
appellants reiterate that the specification at paragraphs 6, 7,
9, 10 and 16 support reading claim 1 as requiring a plating
solution containing a supporting electrolyte having a total
concentration of “up to 0.4M”. Appellants also argue that claim
3, which depends upon claim 1, recites “mixtures thereof”, which
suggests that the concentration in claim 1 must be the total
concentration of a mixture.
We agree with the examiner on this issue. As pointed out
by the examiner on page 7 of the answer, while claims are to be
interpreted in light of the specification and with a view to
ascertaining the invention, it does not follow that limitations
from the specification may be read into the claims. Sjolund v.
Musland, 847 F.2d 1573, 1581, 6 USPQ2d 2020, 2027 (Fed. Cir.
1988). This is because it has been repeatedly held that
limitations from the specification are not to be read into the
claims. Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1325, 65 USPQ2d 1385, 1393 (Fed. Cir. 2003); E.I. Dupont
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