Ex Parte Sugaya et al - Page 6




               Appeal No. 2005-1907                                                                        Page 6                
               Application No. 09/909,898                                                                                        


               present situation is not one in which there is only a general discussion of further features not                  
               needed to interpret the particular words at issue.  In such a case, it is indeed improper to limit the            
               claims to those features.  See In re Bigio, 381 F.3d 1320, 1325, 72 USPQ2d 1209, 1210-11 (Fed.                    
               Cir. 2004)(While, according to the specification, the object of the invention was a hair brush for                
               brushing scalp hair, the court declined to limit the claim terminology “hair brush” to hair brushes               
               for brushing scalp hair because “hair brush” encompasses the brushing of other body hair and                      
               there was no express disclaimer of the broader meaning); In re Hyatt, 211 F.3d 1367, 1372, 54                     
               USPQ2d 1664, 1668  (Fed. Cir. 2000)(“The specification, although lengthy, contains no                             
               definition of ‘shared’ or  ‘sharing’ that would require the Board to construe those limitations in                
               the narrower manner asserted by Mr. Hyatt.); In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d                         
               1671, 1674 (Fed. Cir. 1994)(The word “computer” in the claim was not restricted to the type of                    
               computer described in the specification because there was no specialized definition in the                        
               specification so restricting “computer” to that meaning.  Instead “computer” found to encompass                   
               a calculator as the evidence showed that calculators were understood in the art to be computers,                  
               albeit of more limited in function than those described in the specification).                                    
                      Nor can we agree that the definition provided in the specification is indefinite such that                 
               it fails to provide guidance to one of ordinary skill in the art as to how “mixed substantially                   
               uniformly” is to be limited.  The definition requires that one be able to observe the resin phase                 
               and one of ordinary skill in the art would understand how to operate the microscope to perform                    
               the required observation.  The specification need not describe the conventional adjustments                       







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