Appeal No. 2006-1277 Page 5
Application No. 10/221,711
While it is true that the claims in a patent application are to be given their broadest
reasonable interpretation consistent with the specification during prosecution of a patent
application (see, for example, In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)), it is also well settled that terms in a claim should be construed as those skilled in the art
would construe them (see Specialty Composites v. Cabot Corp., 845 F.2d 981, 986, 6 USPQ2d
1601, 1604 (Fed. Cir. 1988) and In re Johnson, 558 F.2d 1008, 1016, 194 USPQ 187, 194
(CCPA 1977). Further, as pointed out by our reviewing court in Phillipps v. AWH Corp., 415
F.3d 1303, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005), the claims, of course, do not stand
alone but, rather, are part of a fully integrated written instrument consisting principally of a
specification that concludes with the claims. For that reason, claims must be read in view of the
specification, of which they are a part. "[T]he specification is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term." Id.
We agree with the appellant in this case that the examiner’s interpretation of the term
“cam” in claim 1 as requiring simply a “machine part that transfers motion” is not well founded.
Even if the examiner is correct that the MSN Encarta Dictionary intends the bold texting as the
primary, broad definition and the text following the bold texting as a further qualification which
is a secondary definition of the previous description of “cam,” such primary, broad definition is
not the broadest reasonable interpretation of “cam” within the context of appellant’s invention.
We agree with the appellant that a person of ordinary skill in the art would not consider a torsion
spring to be a cam, especially when read in light of appellant’s specification, which describes a
cam arrangement of the cam surfaces 8a of the spindle 8 and the cam followers 9a of the buttons
9 between the spindle 8 and buttons 9 (specification, p. 9 and Figure 8). Rather, such a person
would understand a “cam” to be an element that imparts reciprocating linear motion to another
element pressing against it, by sliding or rolling contact. Consequently, the rejection of
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007