Appeal 2007-0548
Application 10/815,408
The Examiner’s position is that the support can be indirect. (Answer
6.) In the Examiner’s words, a “torso pad” which “supports the infant’s
torso . . . must inherently support the infant’s legs as the infant’s legs are
attached to the infant’s torso.” (Id.)
The Appellants respond: “Claim 1 requires a recess configured to
support an infant’s torso and legs. The clear implication is that Claim 1
requires direct support for both the torso and the legs – indirectly supporting
the legs through the torso does not meet the plain language of the claim. A
contrary reading of Claim 1 would render nugatory the recitation of support
for both the infant’s torso and the infant’s legs.” (Reply Br. 3.)
The Examiner further argues “the supporting of the infant’s torso and
legs is [an] intended use of the claimed invention that does not patentably
distinguish the claimed invention from Bowman.” (Answer 6.)
In response, Appellants point out “whether the noted claim language
is deemed structural or functional, it is not merely a recitation of intended
use. The phrase ‘configured to support an infant’s torso and legs’ modifies
‘recess’ – the recess in the body must have this characteristic to meet the
limitations of Claim 1.” (Reply Br. 4.)
We agree with the Appellants that the language of claim 1 should be
interpreted to require direct support of the legs, not just the torso. While we
give claim language its “broadest reasonable interpretation,” In re Graves,
69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed.Cir.1995); In re Etter, 756
F.2d 852, 858, 225 USPQ 1, 5 (Fed.Cir.1985) (en banc), that interpretation
must be consistent with the teachings in the Specification to be “reasonable.”
See id.
In this case, Appellants claim an infant support that permits the
infant’s legs to be at certain claimed angles during surgery. In order for that
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