Appeal 2006-2985
Application 10/702,225
Although Fuss does not explicitly disclose or show a stapler, one having
ordinary skill in the art would recognize that a stapler is necessarily present based
on Fuss’s teaching of stapling the end surface regions.
PRINCIPLES OF LAW
We determine the scope of the 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.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75
USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). We
must be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the embodiment.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d
1865, 1868 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) The challenge
is to interpret claims in view of the specification without unnecessarily importing
limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).
We remind appellants that it is their burden to precisely define the invention,
not the PTO’s. In re Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed.
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