Appeal No. 2005-1907 Page 5
Application No. 09/909,898
distinguished, and phase separated structure containing phases having a size of more than 1 :m
can not be observed.” (specification, p. 5, ll. 7-14). The Examiner argues that the claim is not
limited to the features recited in the definition because those features are not recited in the
claims. This is because, according to the Examiner, limitations from the specification are not
read into the claims (Answer, p. 7). Further, the Examiner finds Appellants’ definition indefinite
and, therefore, insufficient to limit the claim on the basis that the critical parameters (e.g.
magnification, type of light, staging, etc.) under which optical microscopes are operated are not
given and, therefore, the definition affords no guidance to one of ordinary skill in the art
(Answer, p. 7).
The Examiner’s claim interpretation is in conflict with the law. While the Examiner is
correct that limitations from the specification are not read into claims, see In re Paulsen, 30 F.3d
1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994)(It is improper to add an extraneous
limitation from the specification into the claims), interpreting a claim term in light of a definition
provided in the specification is not reading a limitation from the specification into the claims.
There is a difference between interpreting a phrase within a claim in accordance with a definition
set forth in the specification and adding extraneous limitations into the claim from the
specification wholly apart from interpreting the words of the claim. Appellants here have
chosen to be their own lexicographer by deliberately providing a definition of the claimed phrase
“mixed substantially uniformly.” In such a case an appellant’s lexicography governs. Phillips v.
AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)(en banc). The
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