Appeal 2006-3287
Application 10/022,996
“Where the specification makes clear that the invention
does not include a particular feature, that feature is deemed to
be outside the reach of the claims of the patent, even though the
language of the claims, read without reference to the
specification, might be considered broad enough to encompass
the feature in question."
SciMed, 242 F.3d at 1341, 58 USPQ2d at 1062-63. In my opinion, the
present Specification makes clear that the term “side by side” was not
intended to encompass the coaxially arranged balloons shown in Lam.
Therefore, the Examiner’s reliance on a general dictionary definition for
interpretation of the term “side by side” was improper since that definition
was inconsistent with the definition ascertained upon review of the
Specification and drawings. See Phillips, 415 F.3d at 1320-21, 75 USPQ2d
at 1332.
The majority contends that the rejection of Claims 8-14 is proper even
if the term “side by side” is given the interpretation advanced by Appellants,
because “Figure 7 of Lam fairly depicts balloons situated side by side
notwithstanding that they are separated by tissue.” Decision 4. In my
opinion, it is unnecessary to reach the issue of whether the term “side by
side” as used in the appealed claims reads on Figure 7 of Lam. Figure 7 of
balloon 501 with the stent 20 mounted thereon”). See Autogiro Co. of
America v. United States, 384 F.2d 391, 398, 155 USPQ 697, 703 (Ct. Cl.
1967) (“[I]n those instances where a visual representation can flesh out
words, drawings may be used in the same manner and with the same
limitations as the specification.” (Citations omitted)). See also, Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111, 1118 (Fed. Cir.
1991) (“[D]rawings alone may provide a ‘written description’ of an
invention as required by § 112”).
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