Appeal 2006-3235
Reexamination Control No. 90/006,696
1 The policy basis for construing claims broadly during a reexamination
2 proceeding is explained as follows in Am. Acad., 367 F.3d at 1364,
3 70 USPQ2d at 1830:
4 Construing claims broadly during prosecution is not
5 unfair to the applicant (or, in this case [a reexamination
6 proceeding], the patentee), because the applicant has the
7 opportunity to amend the claims to obtain more precise claim
8 coverage. See [In re] Yamamoto, 740 F.2d [1569,] 1571-72
9 [222 USPQ 934, 936 (Fed. Cir. 1984)] (“Applicants' interests
10 are not impaired since they are not foreclosed from obtaining
11 appropriate coverage for their invention with express claim
12 language. An applicant's ability to amend his claims to avoid
13 cited prior art distinguishes proceedings before the PTO from
14 proceedings in federal district courts on issued patents. When
15 an application is pending in the PTO, the applicant has the
16 ability to correct errors in claim language and adjust the scope
17 of claim protection as needed.”).
18 We note that in Ex parte Papst-Motoren, 1 USPQ2d 1655 (Bd. Pat.
19 App. & Int. 1986), the Board held on rehearing that Yamamoto’s “broadest
20 reasonable interpretation” standard was inapplicable because the patent had
21 expired before the Board issued its initial decision on appeal, which is also
22 the situation presented by the instant appeal.17 The facts in Papst-Motoren
23 were as follows. PTO records show that the order authorizing reexamination
24 was issued on October 17, 1983. The patent expired on January 9, 1985,
25 which was prior to the Board’s February 27, 1986, initial decision on appeal.
26 Papst-Motoren did not exercise its right to amend the patent claims or
27 propose new claims prior to expiration of the patent, at which time that right
17 Neither the Examiner nor Appellant has addressed Papst-Motoren
or Ex parte Bowles, 23 USPQ2d 1015, 1017 (Bd. Pat. App. & Int. 1991),
which applies the claim construction standard of Papst-Motoren.
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