Appeal No. 2005-2642
Reexamination Control No. 90/005,841
“[D]uring examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372, 54
USPQ2d 1664, 1667 (Fed. Cir. 2000) (citing In re Graves, 69 F.3d 1147, 1152, 36
USPQ2d 1697, 1701 (Fed. Cir. 1995); In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5
(Fed. Cir. 1985) (en banc)).
Thus, as explained in In re American Academy of Science Tech Center, 367 F.3d 1359,
1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004), which was an appeal from a Board
decision in a reexamination proceeding,
the Board is required to use a different standard for construing claims than
that used by district courts. We have held that it is error for the Board to
“appl[y] the mode of claim interpretation that is used by courts in litigation,
when interpreting the claims of issued patents in connection with
determinations of infringement and validity.” In re Zletz, 893 F.2d 319,
321 [13 USPQ2d 1320, 1321] (Fed. Cir. 1989); accord In re Morris, 127
F.3d 1048, 1054 [44 USPQ2d 1023, 1028] (Fed. Cir. 1997) (“It would be
inconsistent with the role assigned to the PTO in issuing a patent to
require it to interpret claims in the same manner as judges who,
post-issuance, operate under the assumption the patent is valid.”).
Instead, as we explained above, the PTO is obligated to give claims their
broadest reasonable interpretation during examination.
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