Appeal No. 2006-1872
Application No. 09/769,376
As a first matter, there is a dispute between the Examiner and Appellants with regard to
the extent to which the written description of the specification of Sugawa can be relied upon
when establishing non-statutory or obviousness-type double patenting. The Examiner consults
the written description of Sugawa to determine the meaning of “smooth surface” in Sugawa’s
claim 1. Appellants argue that “[i]t is improper for the Examiner to look outside of the claims by
attempting to define the ‘smooth surface’ language of Claim 1 of Sugawa ‘518 in the
specification when the specification itself does not explicitly set out a definition for the term.”
(Brief, p. 12).
We find no reversible error with regard to the Examiner’s reliance on the specification.
As stated in In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970):
In considering the question, the patent disclosure may not be used as prior art. In
re Boylan, supra; In re Aldrich, 398 F.2d 855, 55 CCPA 1431 (1968). This does
not mean that the disclosure may not be used at all. As pointed out above, in
certain instances it may be used as a dictionary to learn the meaning of terms in a
claim. It may also be used as required to answer the second analysis question
above[: Does any claim in the application define merely an obvious variation of
an invention disclosed and claimed in the patent?] We recognize that it is most
difficult, if not meaningless, to try to say what is or is not an obvious variation of
a claim. A claim is a group of words defining only the boundary of the patent
monopoly. It may not describe any physical thing and indeed may encompass
physical things not yet dreamed of. How can it be obvious or not obvious to
modify a legal boundary? The disclosure, however, sets forth at least one tangible
embodiment within the claim, and it is less difficult and more meaningful to judge
whether that thing has been modified in an obvious manner. It must be noted that
this use of the disclosure is not in contravention of the cases forbidding its use as
prior art, nor is it applying the patent as a reference under 35 U.S.C. § 103, since
only the disclosure of the invention claimed in the patent may be examined.
Not only can the written description of the patent specification be relied upon to determine the
meaning of claim terms, it can also be used to determine what embodiments of the patented
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