Appeal 2006-2109
Application 10/680,678
1 PRINCIPLES OF LAW
2 Claim Construction
3 The general rule is that terms in the claim are to be given their ordinary and
4 accustomed meaning. Johnson Worldwide Assocs. v. Zebco Corp., 175 F.3d 985,
5 989, 50 USPQ2d 1607, 1610 (Fed. Cir. 1999). In the USPTO, claims are
6 construed giving their broadest reasonable interpretation.
7 [T]he Board is required to use a different standard for construing
8 claims than that used by district courts. We have held that it is error
9 for the Board to “appl[y] the mode of claim interpretation that is used
10 by courts in litigation, when interpreting the claims of issued patents
11 in connection with determinations of infringement and validity.” In re
12 Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); accord In re Morris, 127
13 F.3d 1048, 1054 (Fed. Cir. 1997) (“It would be inconsistent with the
14 role assigned to the PTO in issuing a patent to require it to interpret
15 claims in the same manner as judges who, post-issuance, operate
16 under the assumption the patent is valid.”). Instead, as we explained
17 above, the PTO is obligated to give claims their broadest reasonable
18 interpretation during examination.
19 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1834
20 (Fed. Cir. 2004).
21 Although a patent applicant is entitled to be his own lexicographer of patent
22 claim terms, in ex parte prosecution it must be within limits. In re Corr, 347 F.2d
23 578, 146 USPQ 69 (CCPA, 1965). The applicant must do so by placing such
24 definitions in the Specification with sufficient clarity to provide a person of
25 ordinary skill in the art with clear and precise notice of the meaning that is to be
26 construed.
27 Although an inventor is indeed free to define the specific terms used
28 to describe his or her invention, this must be done with reasonable
29 clarity, deliberateness, and precision. "Where an inventor chooses to
30 be his own lexicographer and to give terms uncommon meanings, he
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