Appeal 2007-2370
Application 09/373,141
1 PRINCIPLES OF LAW
2 Claim Construction
3 During examination of a patent application, pending claims are given
4 their broadest reasonable construction consistent with the specification. In
5 re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci.
6 Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
7 Limitations appearing in the specification but not recited in the claim are not
8 read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed.
9 Cir. 2003) (claims must be interpreted “in view of the specification” without
10 importing limitations from the specification into the claims unnecessarily)
11 Although a patent applicant is entitled to be his or her own lexicographer of
12 patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
13 347 F.2d 578, 580 (CCPA 1965). The applicant must do so by placing such
14 definitions in the Specification with sufficient clarity to provide a person of
15 ordinary skill in the art with clear and precise notice of the meaning that is to be
16 construed. See also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (although
17 an inventor is free to define the specific terms used to describe the invention, this
18 must be done with reasonable clarity, deliberateness, and precision; where an
19 inventor chooses to give terms uncommon meanings, the inventor must set out any
20 uncommon definition in some manner within the patent disclosure so as to give
21 one of ordinary skill in the art notice of the change).
22 Obviousness
23 A claimed invention is unpatentable if the differences between it and the
24 prior art are “such that the subject matter as a whole would have been obvious at
25 the time the invention was made to a person having ordinary skill in the art.” 35
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