Appeal No. 2006-2247
Reexamination Nos. 90/006,554 and 90/006,894
1 In the PTO where patentability issues are decided, claims are given their
2 broadest reasonable interpretation consistent with the specification. In re Bigio,
3 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1211 (Fed. Cir. 2004)(“[T]he PTO gives a
4 disputed claim term its broadest reasonable interpretation during patent
5 prosecution.”). This mode of claim interpretation applies even for a patent under
6 reexamination. In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.
7 Cir. 1984)(“We affirm the board’s decision to give claims their broadest
8 reasonable interpretation, consistent with the specification, in reexamination
9 proceedings.”).
10 Here, appealed claim 1 does not specifically limit the “oxidizing” step to any
11 particular degree of oxidation, although the specification states that “[t]he
12 polyvinylpyridines used in the process...are up to 100, preferably 50-98,%
13 oxidized.” (Column 3, lines 50-52.) Because the term “up to 100...%” in the
14 present context includes any positive value from 0 to 100, we must interpret
15 appealed claim 1 to read on any degree of oxidation. Additionally, the appealed
16 claims do not recite any amount for the acid component nor distinguish the acid
17 component from the acid catalyst. Accordingly, we interpret the appealed claims
18 to read on the use of any amount of acid that is sufficient to oxidize
19 polyvinylpyridine to any degree as well as a process in which the acid component
20 and acid catalyst are one and the same. Furthermore, appealed claim 1 recites the
18
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