Appeal No. 2007-0599
Application No. 10/822,054
consider its patentability separately. See 37 C.F.R. § 41.37(c)(1)(vii). When
claims are argued as a group, the Board has the discretion to choose a single
claim on which to base its decision (id.).
Having chosen claim 1, our mandate is to give claims their broadest
reasonable interpretation. The reason for this is to reduce “the possibility
that claims, finally allowed, will be given broader scope than is justified.”
In re Yamamoto, 740 F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984).
Construing claims broadly during prosecution is not unfair to
the applicant . . . because the applicant has the opportunity to
amend the claims to obtain more precise claim coverage. See
Yamamoto, 740 F.2d at 1571-72 (“Applicants’ interests are not
impaired since they are not foreclosed from obtaining
appropriate coverage for their invention with express claim
language. An applicant’s ability to amend his claims to avoid
cited prior art distinguishes proceedings before the PTO from
proceedings in federal district courts on issued patents. When
an application is pending in the PTO, the applicant has the
ability to correct errors in claim language and adjust the scope
of claim protection as needed.”)
In re American Academy of Science Tech Center, 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004). Claim 1, when read in the context
of the specification as it would be understood by the person of skill in the
art, is clearly drawn to an apparatus – a cold plate – not a system comprising
the cold plate and a heat source. Such an apparatus is suggested by the
combination of Doll in view of Anderson. Consequently, we affirm the
rejection of claim 1. Because claims 2, 3, 7-9, 13-15, 19 and 20 were not
separately argued, they fall with claim 1.
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