Appeal No. 2006-0767
Application No. 09/962,258
scope and meaning of each limitation before comparing the claim limitations with the
applied prior art. See Gechter v. Davidson, 116 F.3d 1454, 1457, 1460 n.3, 43
USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997). As recited in claim 1 on appeal, the
difference between the prior art and the claimed subject matter as found by the
examiner is that “only part” of the aryl halide is initially charged while “the remainder” of
the aryl halide is added with the introduction of the Grignard reagent (Answer, page 3).
During examination before the examiner, claim language must be given its broadest
reasonable interpretation in its ordinary meaning, consistent with the specification as it
would have been understood by one of ordinary skill in the art. See Phillips v. AWH,
415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005((en banc); In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). As clearly set forth in
appellants’ specification, “part” of the aryl halide includes “from 20 to virtually 100%”
with the “remainder” being given its ordinary meaning of “the rest adding up to 100%,”
which is added during the introduction of the Grignard reagent (specification, page 6, ll.
27-31, underlining added). Giving “virtually” its ordinary meaning, we construe this term
as meaning “almost entirely,” i.e., 99+%.
In view of our claim construction discussed above, the process as recited in claim
1 on appeal reads on “virtually 100%” or 99+% of the aryl halide being initially charged
to the reaction mixture with only small or infinitesimal amounts of the aryl halide
introduced with the Grignard reagent. Thus the extremely small differences in amounts,
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