Appeal No. 2007-0484 6
that the slit not extend through to the opposing face. While this uncertainty
arguably makes the claim indefinite, we do not have that rejection before us.
The claimed slit is a narrow opening in the largest face (or one of the set of
largest faces) of the building panel that crosses the entirety of that face and extends
below the face, but not through to the opposite face of the panel. We understand
"sever" to simply reinforce the idea that the slit traverses the primary face.23 We
do not construe "slit" to require any particular geometry other than narrowness.
Dow further argues24 that the slit must "facilitate bending a building panel
into a non-planar configuration for insertion into a cavity." This functional
language does not appear in the claim and is not required for the claim to make
sense. Dow's argument makes sense only if this functional language can be read as
defining "slit". Clarity, deliberateness, and precision are, however, the quid pro
quo of specification lexicography so those of ordinary skill will have clear notice.25
Dow controls the language of its specification and its claims. If Dow wishes
either to be read a particular way, Dow has both the means and the responsibility to
ensure they are clearly drafted to reflect Dow's intended meaning.26 We note that
an alternate reading of the cited portion of Dow's specification is that a traversing
slit in a deformable panel will inherently facilitate bending of the panel.
23 See Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984) (a claim that can be
construed can be examined for that construction).
24 AB at 8, citing the specification, page 13:1-5.
25 In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).
26 The applicant has the responsibility for drafting the claim to provide notice of
precisely what the applicant means. In re Morris, 127 F.3d 1048, 1056, 44
USPQ2d 1023, 1029 (Fed. Cir. 1997). This responsibility is particularly important
before the Office when the claim may usually be amended to avoid uncertainty.
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