Appeal 2006-2534
Application 10/789,411
Additionally, we note that Patent and Trademark Office (PTO) is not
required, in course of prosecution, to interpret claims in patent applications
in same manner as courts interpret claims during infringement proceedings .
Instead, the PTO applies to the language of proposed claims the “broadest
reasonable interpretation” or the meaning in their ordinary usage as they
would be understood by one of ordinary skill in art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by written description in applicant’s specification. In re Morris,
127 F.3d 1048, 1053-54, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (citing In
re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989) and In re
Yamamoto, 740 F.2d 1569, 222 USPQ 934 (Fed. Cir. 1984)). As such,
during prosecution of the patent application, Appellants have the opportunity
to make amendments to the claims in order to recite the claim language that
precisely defines the scope of the claimed subject matter and distinguishes
the claimed subject matter over the applied prior art.
In the present case, determining the scope of the claims in our opinion
was specifically based on the broadest reasonable interpretation (see
Decision 5). In particular, we found that claim 1 merely requires the plate to
extend to an area of the shaft with no specific description of their contact
area. Although the Specification discloses various embodiments with
different contact configurations between the plate and the shaft
(Specification ¶ 0035-0039), the claim language does not specifically delimit
the contact configuration to such particular arrangements. Similarly, claim
15 merely requires an inner diameter of the plate to bear upon an outer
diameter of the shaft, which does not preclude a plate touching the shaft and
including a portion that may dig into the shaft, as shown by Carlson. See for
5
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