Appeal 2007-1366
Application 90/005,090
1 Analysis
2 Claim construction
3 In distinguishing certain portions of the prior art, Patentee argues that
4 the process of Claim 1 prepares TRIS from only two reactants, MAS and
5 TMS. Reply Brief filed June 16, 2003, pp 4-5: Reply Brief in Response to
6 Supplemental Examiner’s Answer filed September 9, 2005, pp. 6-7, footnote
7 1, pp. 14-15. Patentee also distinguishes the claimed subject matter from the
8 prior art by arguing that the claimed process does not include the use of a
9 water-solvent mixture. Reply Brief in Response to Supplemental
10 Examiner’s Answer filed September 9, 2005, pp. 18-19, n. 9. We
11 understand Patentee’s position to be that the literal scope of the mixture
12 employed to form TRIS in Claim 1 is limited to the mixture of MAS and
13 TMCS and the inclusion of different or additional silanes is excluded. We
14 also understand Patentee’s position to be that the literal scope of Claim 1 is
15 limited to the use of water as a solvent in making TRIS and that the use of
16 other solvents such as ether is excluded.
17 Claims involved in a reexamination are ordinarily given the broadest
18 reasonable construction. Yamamoto, 740 F.2d at 1571, 222 USPQ at 936.
19 However, a narrowed construction is appropriate where the patent has
20 expired, as is the case here. Papst-Motoren, 1 USPQ2d at 1656. The
21 language of Claim 1 is susceptible to the narrow construction urged by
22 Patentee and we adopt that construction.4 Pabst-Motron, 1 USPQ2d at
23 1656.
4 We express no view on what mixtures might infringe or are “encompassed
by” the claims under the doctrine of equivalents. See Reply Brief in
Response to Supplemental Examiner’s Answer filed September 9, 2005, p.
7, n. 1 and accompanying text.
- 12 -
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013