Appeal 2006-3287
Application 10/022,996
Linda M. Gaudette, Administrative Patent Judge, dissenting:
The majority’s decision to affirm the rejection of appealed claims
3-14 under 35 U.S.C. § 103(a) is based on a finding that the Examiner’s
claim construction is reasonable. See Decision 4 (noting that “[i]f an
applicant wants to impart a meaning to a claim term that is different than its
ordinary dictionary definition, it is incumbent upon the applicant to
specifically do so in the Specification.”) Decision 4. I disagree with this
finding. In my view, the Examiner has improperly relied on a dictionary
definition in construing the claims without proper consideration of the
specification from the standpoint of a person of ordinary skill in the art. In
so doing, the Examiner has applied an overly broad construction of the claim
term “side by side.”
During prosecution claims are given their broadest reasonable
construction “in light of the specification as it would be interpreted by one of
ordinary skill in the art.” In re Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359,
1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004):
“The inquiry into how a person of ordinary skill in the art
understands a claim term provides an objective baseline from
which to begin claim interpretation. … That starting point is
based on the well-settled understanding that inventors are
typically persons skilled in the field of the invention and that
patents are addressed to and intended to be read by others of
skill in the pertinent art.”
Phillips v. AWH Corp., 415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed.
Cir. 2005)(citing, inter alia, In re Nelson, 280 F.2d 172, 181, 126 USPQ
242, 251 (CCPA 1960) (“The descriptions in patents are not addressed to the
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