Appeal No. 2006-1676
Application No. 10/384,882
SciMed concisely stated this claim interpretation principle as
follows:
Where the specification makes clear that the invention does
not include a particular feature, that feature is deemed to
be outside the reach of the claims of the patent, even
though the language of the claims, read without reference
to the specification, might be considered broad enough to
encompass the feature in question. SciMed Life Sys. v.
Advance Cardiovascular Sys., 242 F.3d at 1341, 58 USPQ2d at
1062-63.
Appellants argue in their brief that both Molina and
Brennan use an alkoxylated Mannich base (limitation b2 in the
claims) to form their foams, whereas Appellants use non-
alkoxylated Mannich bases. (Brief at pages 4). Appellants
indicate that Molina and Brennan teach that the reaction product
of a compound having an aromatic ring, an aldehyde or ketone,
and a primary or secondary amine is further reacted with either
ethylene oxide or propylene oxide to alkoxylate it, and thereby
forming what is known as a Mannich polyol. It is the Mannich
polyol, Appellants state, which is used to form Molina’s
Brennan’s foam. Moreover, Appellants in their reply brief state
that the Examiner’s claim construction, which interprets the b2
reaction product to include alkoxylated Mannich bases, is
contrary to the express disclosure in their specification at
page 3, lines 11-19. Appellants also cite to the comparative
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