Appeal 2006-3357
Application 10/310,311
not labelled in Fig. 5) and facilitates protected manual grasping of the
module 36 for insertion into and extraction from the connector portion
32. (Bellomo, col. 4, ll. 14-32.)
PERTINENT LEGAL PRECEDENT
It is well settled that the recitation of an intended use for an old
product does not make a claim to that old product patentable. In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
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, 1868-69
(Fed. Cir. 2004) (“Though understanding the claim language may be aided
by the explanations contained in the written description, it is important not to
import into a claim limitations that are not a 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.
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