Appeal 2006-3287
Application 10/022,996
or 'near-the-side' as argued by the Examiner" (page 4, Reply Br., first
paragraph).
Appellants' argument does not refute the Examiner's finding that
"Dictionary.com defines 'side by side' as 'next to each other; close together,'”
and that “Appellant's specification does not include an alternative definition
for this term" (page 4 of Answer, first para.). Hence, it is not enough for
Appellants to simply point to their Specification and drawings for a
depiction of their interpretation of the claim language “side by side” such
that the claim language means something other than that defined in a
dictionary. If an applicant wants to impart a meaning to a claim term that is
narrower than its ordinary dictionary definition, it is incumbent upon the
applicant to specifically do so in the Specification. In the instant case,
Appellants point to no definition in the Specification of the claim term “side
by side” which would preclude the axial alignment admittedly disclosed by
Lam. Moreover, we concur with the Examiner that Figure 7 of Lam fairly
depicts balloons situated side by side notwithstanding that they are separated
by tissue. Manifestly, the disposition of the two balloons shown in Lam's
Figure 7 meets the dictionary definition of "close together" presented by the
Examiner.
The dissent’s approach, in our opinion, would violate the proscription
against reading limitations from the Specification into the claims during ex
parte prosecution. As appreciated by the dissent, the SciMed case involves
patent infringement, and it is well settled that claim interpretation in such
inter partes cases is under a narrower standard, presuming patent validity,
than the one applied in prosecution proceedings before the USPTO. Perhaps
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