Appeal 2007-1389
Application 10/790,898
911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
D. Analysis
As a first matter, we agree with Appellants that all the claims are
limited to composite articles having “large scale predictable dimensional
stability” as that phrase further limits a property of the article, i.e., gives life
and meaning to the claim, rather than merely defining an intended use or an
inherent property of the structure recited in the body of the claim. See
Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 480-81 (CCPA 1951) (A
preamble reciting "An abrasive article" was deemed essential to point out the
invention defined by claims to an article comprising abrasive grains because
“abrasive” further limited the structure of the article).
As a second matter, we agree with Appellants that “large scale
predictable dimensional stability” has been given a special meaning in the
Specification and that meaning governs when interpreting the claims. See
Phillips v. AWH Corp., 415 F.3d 1303, 1315-16, 675 USPQ2d 1321, 1329
(Fed. Cir. 2005) (“[T]he specification may reveal a special definition given
to a claim term by the patentee that differs from the meaning it would
otherwise possess. In such cases, the inventor's lexicography governs.”). As
claimed, the composite article must have at least a segment that retains
substantially its predicted dimensions after heating as required by
Appellants’ definition (FF 2; see also FF 3).
Lu discloses a composite article (FF 6). However, while Lu does not
expressly disclose that the claimed property is present in Lu’s described
composite article, the Examiner points out that the radiation curable
composition of Lu is a curable oligomeric composition, the same type of
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