Appeal No. 2006-0111
Application 09/900,746
term “breaking” to include the perforating and slitting taught by
Deacon (id.). The examiner also finds that Deacon fails to disclose
the speed at which the web travels but determines that this speed is
a “cause-effective variable” well within the ordinary skill in the
art (Answer, paragraph bridging pages 7-8; see also page 11).
Appellants argue that the term “breaking” as used in the
specification should not be read so broadly as to include the act of
separating a web of material in the machine direction (MD), i.e.,
slitting (Reply Brief, page 3; Brief, page 13). Appellants argue
that one should look to the “patentee’s use of the term in the
specification of the patent” where appellants define “breaking” as
the action creating a leading edge connected to the trapped portion
of the web by pulling the web back or breaking the perforation
(id.).
Appellants’ arguments are not persuasive. First we must note
that we are not concerned with “the specification of a patent” but
the claim construction of terms during ex parte prosecution (Reply
Brief, page 3). In ex parte prosecution, the words of a claim must
be given their broadest reasonable meaning in their ordinary usage
as they would have been understood by one of ordinary skill in the
art, taking into account any enlightenment from the specification.
See Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329
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