Appeal 2007-1629
Application 10/138,337
Crish, 393 F.3d 1253, 1256, 73 USPQ2d 1364, 1367 (Fed. Cir. 2004). The
Examiner correctly finds (Answer 5) that cyclic hydrocarbons would be
understood by persons of ordinary skill in the art to include both aromatic
and non-aromatic hydrocarbon rings. This definition is also consistent with
the Specification (Spec. 3: 20-30; Answer 5). Thus, the broadest reasonable
meaning of the phrase “cyclic . . . hydrocarbons” is that it includes aromatic
hydrocarbons. We adopt this meaning here.
When a patent applicant asserts a definition of a claim term during
patent prosecution that is contrary to its broadest reasonable meaning as
would be understood by a person of skill in the art in the context of the
patent application, it is our opinion that the Office may chose to reject the
applicant’s definition in favor of its own. In reaching a final determination
of a claim term’s broadest reasonable meaning, the Office may consider
several possible definitions before settling on the one that is most reasonable
in the context of the claimed invention. That other definitions were
contemplated and ultimately rejected does not inject ambiguity into the
claim, even when the rejected definition is Appellants’ own. But, it should
be made perfectly clear on the record – once the Office has chosen the
broadest reasonable definition to rely on in examining the claims – that all
other definitions have been disavowed, including definitions espoused by the
applicant. By making the record clear, the claim interpretation reasonably
relied upon during patent prosecution is unambiguous and there is no chance
that definitions proffered by an applicant, but rejected by the Office, will
lead the public astray about the proper scope of the claim.
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