Appeal 2007-0911
Application 10/058,808
appropriate that Appellants bear the burden to establish that this derivation
requirement would necessarily result in a product HfC-containing fiber that
is patentably distinct from the HfC-containing fiber product of Uemura.
After all, the Patent and Trademark Office is not equipped to manufacture
and compare products.
Here, Appellants have not satisfied this burden by the arguments of
counsel furnished in the Brief (Br. 9-11). This is because Appellants have
not demonstrated that the HfC component of the fiber product of Uemura
patentably differs from any HfC prepared from or derived from a pre-
ceramic polymer. Moreover, Appellants’ contention that a ceramic fiber is
expected to be made principally of ceramic is not persuasive because the
Specification does not furnish a definition for ceramic fiber that limits that
term to a fiber made principally from ceramic.
Appellants’ reference to a portion of the preferred embodiment
description found at page 73 of the Specification as supporting the notion
that the claim 8 product requires a structural ceramic fiber made
substantially entirely of a ceramic material and could not include a
composite fiber such as disclosed by Uemura within the scope thereof is
without merit because claim 8 is not so limited. After all, during prosecution
of a patent application, the claims therein are given the broadest reasonable
interpretation consistent with the Specification as they would be understood
by one of ordinary skill in the art. In re Zletz, 893 F.2d 319, 321-22, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). However, it is inappropriate to read
in limitations from the Specification, as Appellants would have us do here.
In re Paulsen, 30 F.3d 1477, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994).
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