Appeal No. 2005-1483 3
Application No. 90/005,947
Opinion
Turning first to the rejection under section 112, we will affirm this rejection. We are
in agreement with the examiner that (answer, page 4) the recitation in question is
misdescriptive of appellants’ disclosed device. We agree that due to the space between
the isolation pipe 16 and the screen 12, fluid could flow radially inwardly across the screen
and radially outwardly across the screen unhindered by the position of the isolation valve
20, i.e., when the valve is closed. We are furthermore in agreement that the examiner’s
proposed correction would remedy this problem.
Turning to the rejection under section 102, we note that appellants’ first argument is
based on claim construction and the examiner’s alleged misconstruction of one claim
limitation. The PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be understood by
one of ordinary skill in the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written description contained in the
applicants’ specification. In re Morris, 127 F.3d 1048, 1053-54, 44 USPQ2d 1023,
1027(Fed. Cir. 1997). This is the standard for claim interpretation in both original
examination and re-examination. See In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ
934, 936 (Fed. Cir. 1984).
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