Appeal 2007-0169
Application 10/262,015
Appellants rely on paragraph 39 of U.S. Patent Application 10/167,926, filed
June 11, 2002, mentioned (but not incorporated by reference) in paragraph
0004 of the present application (Br. 3). According to the Appellants, the
claimed nanolaminate components are limited to those made of the materials
described at paragraph 39 of U.S. Patent Application 10/167,926 (Br. 3-4).
The Appellants specifically state at pages 3 and 4 of the Brief that:
U.S. Patent Application S.N. 10/167,926, filed June 11,
2002…. states…."Nano-laminate materials are a new class of
materials for technological application. At this time, nano-
laminate structures have been synthesized by PVD in elemental
form, as alloys, or a compounds-from [sic] at least 82 of the 92
naturally occurring elements. The microstructure scale of these
materials is determined during synthesis by controlling the
thickness of the individual layers. These layers are from one
monolayer (0.2 nm) to hundreds of monolayers (>500 nm) thick
and, except in special cases, generally define the in-depth
crystalline grain size."
The Examiner takes the position that the claimed nanolaminate
structure is not limited to that produced by the materials described at
paragraph 39 of a patent application not incorporated into the present
application (Answer 5-6). In other words, the term “nanolaminate” recited
in claim 1 defines laminate sizes, not laminate materials (id.).
The dispositive question is, therefore, whether the Examiner’s
interpretation of the claimed “nanolaminate component” as “a nano-scale
laminate component” is unreasonable when it is properly construed in light
of the Specification. On this record, we answer this question in the negative.
As indicated by our reviewing court in In re Morris, 127 F.3d 1048,
1053-54, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997), in proceedings before
the U.S. Patent and Trademark Office (PTO), claim language must be given
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