Appeal 2007-0170
Application 10/262,510
application (Answer 5-6). In other words, the term “nanolaminate” recited
in claim 1 defines laminate sizes, not laminate materials (Answer 6).
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
the broadest reasonable meaning in ordinary usage, taking into account the
written description found in the Specification. Applying this principle of
law to the present situation, we determine that the Examiner’s interpretation
is reasonable. Initially, we observe that the words in claim 1 do not
expressly limit the materials of the nanolaminate components to those
referred to in paragraph 39 of Application 10/167,926. Phillips v. AWH
Corp., 415 F.3d 1303, 1312, 75 USPQ2d 1321, 1328 (Fed. Cir. 2005)
(en banc) (our claim construction analysis begins with the words of the
claims themselves); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA
1978) (“We have consistently held that no ‘applicant should have limitations
of the specification read into a claim where no express statement of the
limitation is included in the claim.”). Secondly, we observe that the
Specification at page 1, paragraph 0003, defines “nano” in terms of
dimensions, sizes and scales. Consistent with this written description, the
Specification at page 1, paragraph 0004, indicates that “[t]he present
invention involves electrophoretic/electrochemical devices with nanometer-
scale metallic components.” [Emphasis added]. At page 5 of the
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