Appeal 2005-2193
Application 09/385,405
contaminants of Schmidt are “first components” within the meaning of claim
71. During examination, "claims . . . are to be given their broadest
reasonable interpretation consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004). In the
present case, it is reasonable to read “first component” as including the trace
contaminants Schmidt describes as present in the aqueous layer. Appellant’s
Specification provides no definition or express disclaimer excluding such
trace contaminants. Absent claim language carrying a narrow meaning, we
only limit the claim based on the specification when those sources expressly
disclaim the broader definition. In re Bigio, 381 F.3d 1320, 1324-25,
72 USPQ2d 1209, 1210-11 (Fed. Cir. 2004). We also note that it is
reasonable to interpret claim 71 more narrowly than claim 72, a claim
dependent on claim 71. “[T]he presence of a dependent claim that adds a
particular limitation gives rise to a presumption that the limitation
in question is not present in the independent claim.” Phillips v. AWH Corp.,
415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005)(en banc).
While Appellant would have us limit “first components” as recited in claim
71 to those having an affinity for the solvent based layer (Request 3), this
affinity limitation is contained in claim 72 and, therefore, it is reasonable to
conclude that claim 71 is not so limited. (See also Decision 5.)
Appellant has not persuaded us of a reversible error in the conclusion
articulated in the Decision that Schmidt describes treating “first
components” as claimed. Moreover, we are not persuaded that the starting
materials of Schmidt are different from those treated in the claimed process.
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