Appeal No. 2005-2567
Application 10/032,606
“wherein resistance to the flow of electric current through the [fuel] cell is non-uniform over a
flow area of the cell to regulate the flow of oxygen ions through any region of said cell in
proportion to the partial pressure of hydrogen in said region,” which is antecedent to the
limitation “wherein said electrical resistance is non-uniform over one of said anode, cathode, and
electrolyte” in the body of the claim, must be given weight as a claim limitation which
characterizes the claimed method in order to give meaning to the claim and properly define the
invention (see reply brief, e.g., page 2).
We determine that when the subject preambular language coupled with the language in
the body of the claim is considered in the context of the claimed invention as a whole, including
consideration thereof in light of the written description in appellants’ specification, it must be
given weight as a claim limitation which characterizes the claimed method in order to give
meaning to the claim and properly define the invention. See generally, In re Fritch, 972 F.2d
1260, 1262, 23 USPQ2d 1780, 1781 (Fed. Cir. 1992) (citing Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 896, 221 USPQ 669, 675 (Fed. Cir. 1984)); Corning Glass
Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed. Cir.
1989), In re Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
Thus, the subject claim language must be taken into account in giving the terms of claim
2 the broadest reasonable interpretation in ordinary usage as would be understood by one of
ordinary skill in the art in light of the written description in the specification, including the
drawings, as interpreted by this person, unless another meaning is intended by appellants as
established in the written description of the specification, and without reading into the claims
any limitation or particular embodiment disclosed in the specification. See, e.g., 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). Indeed, consideration of a claim in any
respect, including the application of prior art, requires that all claim limitations must be given
effect. See, e.g., In re Geerdes, 491 F.2d 1260, 1262-63, 180 USPQ 789, 791-92 (CCPA 1974)
(In considering grounds of rejection under 35 U.S.C. §§ 103 and 112, “every limitation in the
claim must be given effect rather than considering one in isolation from the others.”).
We determine that when the subject claim language is given the broadest reasonable
interpretation in context, the claimed fuel cell must be capable of non-uniform electrical
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