Appeal 2007-2413
Application 10/041,117
Glaverbel Societe Anonyme v. Northlake Marketing & Supply, Inc., 45 F.3d
1550, 33 USPQ2d 1469 (Fed. Cir. 1995) for the proposition that the claims
should be read in light of the Specification, that “the specification, including
the drawings, set forth that the phrase ‘self-expanding lattice and graft
material covering at least a portion of the self-expanding lattice’ means a
stent running the length of the graft and not what Rhodes discloses or
suggests. In other words, it is clear from the specification what the claims
set forth.” (Reply Brief, 2-3).
During prosecution, however, claims are given their broadest
reasonable interpretation. In re Sneed, 710 F.2d 1544, 1548, 218 USPQ 385,
388 (Fed. Cir. 1983). In addition, it is during prosecution that inventors can
amend their claims; thus it is during prosecution that any ambiguity in the
claim should be clarified. See, e.g. In re Morris, 127 F.3d 1048, 1056, 44
USPQ2d 1023, 1029 (Fed. Cir. 1997) (“It is the applicants’ burden to
precisely define the invention, not the PTO’s. See 35 U.S.C. § 112, ¶ 2. . . .
[T]his section puts the burden of precise claim drafting squarely on the
applicant.”).
Claim 1 uses the transition phrase “including” before the phrase “self-
expanding lattice and graft material covering at least a portion of the self-
expanding lattice,” and cannot be interpreted to require that the stent run the
length of the graft. Appellants are asking us to read limitations from the
Specification into the claims, which we decline to do. See Constant v.
Advanced Micro-Devices, Inc., 848 F.2d 1560. 1570-71, 7 USPQ2d 1057,
1064 (Fed. Cir. 1988) (noting that it is the claims, not the specification, that
defines the claimed invention, and that embodiments and examples
appearing in the specification will generally not be read into the claims).
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