Appeal 2007-0691
Application 10/465,423
1 At the outset, it is not clear how Ciba can disagree when Chasan
2 plainly describes lubricants for two-stroke engines which contain as the
3 preferred triazole the triazole specified in the claims on appeal.
4 Ciba also maintains that experimental data in Example 1 of the
5 specification and the Chasan Declaration show the "merit of the present
6 invention."
7 To resolve the weight to be given the experimental data, it is first
8 necessary to determine the scope of the claims on appeal.
9 Claim interpretation
10 During examination, pending claims are given their broadest
11 reasonable construction consistent with the specification. In re Prater,
12 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
13 We decline to give the preamble "[a]n engine oil composition" any
14 controlling weight because the nature of the composition is absolutely clear
15 from the three ingredients specified. Bristol-Myers Squibb Co. v. Ben Venue
16 Laboratories, Inc., 246 F.3d 1368, 1373, 58 USPQ2d 1508, 1512 (Fed. Cir.
17 2001) (if the body of the claim sets out the complete invention, and the
18 preamble is not necessary to give "life, meaning and vitality" to the claim,
19 "then the preamble is of no significance to claim construction because it
20 cannot be said to constitute or explain a claim limitation"). However, even
21 if the preamble was considered a limitation, Chasan—like Ciba—describes
22 its lubricant as being useful in a two-stoke engine.
23 A review of the plain language of composition of matter claim 1
24 reveals that a person of ordinary skill in the art would understand that Ciba
25 is claiming a lubricant composition comprising at least components (a), (b)
12
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