Appeal 2007-1144
Application 10/424,616
within the definition of ‘self-tanning agent’ because pigments do not react
chemically with the surface layer of the skin to produce the appearance of a
tan,” and therefore, the Examiner’s “interpretation of the term ‘self-tanning
agent’ is in direct conflict with the meaning of the phrase as it is used in the
cosmetic industry” (id.; see also Reply Br. 5-6).
The Examiner argues that, under the broadest reasonable
interpretation, the “pigments themselves give the tanning effect, [so] they
are self-tanning agents” (Answer 5).
“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989). Thus, “in proceedings before the PTO, claims
in an application are to be given their broadest reasonable interpretation
consistent with the specification and that claim language should be read in
light of the specification as it would be interpreted by one of ordinary skill in
the art.” In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir.
1983) (citation omitted). However, “limitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993).
We do not find Appellants’ dictionary-based interpretation of “self-
tanning agent” to be unreasonable. However, we do not agree that it is the
broadest reasonable interpretation, as required. Rather, in our view, by
seeking to limit “self-tanning agent” to agents that chemically react with the
skin, Appellants improperly read their preferred embodiment from the
Specification into the claims. We agree with the Examiner that one of
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