Appeal 2007-0420
Application 10/643,383
the phrase to read on a second electrode in proximity to the at least one cell
(Answer, p. 5). However, the Examiner’s reading of the critical phrase in
the method of Claim 11 appears to be far broader in scope than, and
inconsistent with, a reasonable interpretation of the teaching of Appellants'
drawings and specification as a whole, including the problems Appellants'
claimed invention were designed to solve. “[I]n proceedings before the
PTO, claims in an application are to be given their broadest reasonable
interpretation consistent with the specification.” In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983).
Furthermore, the possibility that a person having ordinary skill in the
art might perform a process incorrectly interpreted to fall within the scope of
Appellants' claims while following Alexandres’ process is immaterial to the
issue of the unpatentability of Appellants' claimed process for obviousness
to a person having ordinary skill in the art at the time the application was
filed. The teaching of Alexandres combined with the acknowledged prior
art, reasonably would not have suggested to a person having ordinary skill in
the art all the specific limitations of the process claimed by Appellants, in
particular a process wherein both the first and second electrodes must be
disposed outside of the weld area. Rather, the Examiner’s case for the
unpatentability of the process Appellants claim, with all its particular
limitations, appears to be based on impermissible hindsight.
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