Appeal 2006-2534
Application 10/789,411
extends to a point which is an area of the shaft. Therefore, this area of the
shaft may reasonably be interpreted as extending from a point close to the
outer surface of the shaft to a point which is a part of the shaft.
The second decision Appellants rely on is Andersen Corp. v. Fiber
Composites LLC, No. 00-2548, 2003 WL 21754817 at *1, 81 USPQ2d 1545
(Fed. Cir. 2007), which relates to the doctrine of claim differentiation.
Appellants argue that since claim 15 depends upon claim 1 and requires
contact between the plate and the shaft, claim 1 must be broader so that its
recitation of “extending to an area of the shaft” can only mean that no
contact exists between the plate and the shaft (Request 3).
While the Andersen court suggests that claims having different
words or phrases are to be presumed to have different meaning and scope,
the court also cautions against broadening claims beyond their correct scope
as determined in light of the specification, the prosecution history, and any
extrinsic evidence. Andersen, 2003 WL 21754817 at *3, 81 USPQ2d at
1552 (quoting Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473,
1480, 45 USPQ2d 1429, 1434 (Fed. Cir. 1998)). Multiform further points to
other cases where doctrine of claim differentiation did not require a
difference in scope among the claims (Id. at 1434). See Tandon Corp. v.
United States Int’l Trade Comm’n, 831 F.2d 1017, 1023, 4 USPQ2d 1283,
1288 (Fed. Cir. 1987) (allowing for two claims that are in different words to
cover the same subject matter); Moleculen Research Corp. v. CBS, Inc., 793
F.2d 1261, 1269, 229 USPQ 805, 810 (Fed. Cir. 1986) (affirming district
court’s construction of a claim although it rendered a dependent claim
redundant).
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