Appeal 2006-2534
Application 10/789,411
2. Claim Differentiation
Appellants further argue that the language of claim 15, requiring that
the inner diameter of the plate “bear upon an outer diameter of the shaft,”
relates to a contact between the plate and the shaft (Request 3). Appellants
further rely on doctrine of claim differentiation and assert that claim 1 has to
be broader than claim 15 such that the limitation of “extending to an area of
the shaft” can only mean no contact between the plate and the shaft (id.). In
addressing the scope of the claims, Appellants rely on two recent court
decisions which address the meaning of the terms used in separate claims
and the use of doctrine of claim differentiation (id.).
The first decision suggests looking to and examining the intrinsic
evidence, the claim language itself, the written description, and the
prosecution history in determining the scope of the claims. Depuy Spine,
Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1014, 80 USPQ2d
1865, 1871 (Fed. Cir. 2006) (quoting Phillips v. AWH Corp., 415 F.3d 1303,
1312-17, 75 USPQ2d 1321, 1325-29 (Fed. Cir. 2005)). Although
Appellants have not pointed to any specific part of this court decision which
they believe to support their position, we address the scope of claims 1 and
15 consistent with its holding.
In our determination, we will give the claims their broadest reasonable
interpretation consistent with the specification, and limitations appearing in
the specification are not to be read into the claims. See In re Zletz, 893 F.2d
319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Here in the present
case under appeal, looking at the language in claim 1 itself and giving the
claim language its broadest reasonable interpretation, we note that the
recitation of “extending to an area of the shaft” merely means that the plate
3
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