Appeal 2006-1865
Application 09/660,433
Patent 5,802,641
conclude that Appellant has rebutted any prima facie case of recapture based on
this limitation.
As to claims 14 and 91, Appellant argues, that since the preferred
embodiment of the specification includes this limitation, these claims (which cover
the preferred embodiment) are not broadened in this aspect. Appellant is asking
this Board to read limitations into the claims from the specification. We decline to
do so.
We determine the scope of claims in patent applications not solely on the
basis of the claim language, but upon giving claims their broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004). However, the court cautioned against
reading limitations into the claim from the specification:
We have cautioned against reading limitations into a claim from
the preferred embodiment described in the specification, even if it is
the only embodiment described, absent clear disclaimer in the
specification. See Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d
898, 906 (Fed.Cir.2004) ( “Even when the specification describes only
a single embodiment, the claims of the patent will not be read
restrictively unless the patentee has demonstrated a clear intention to
limit the claim scope using ‘words or expressions of manifest
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