Appeal 2007-2533
Application 09/972,434
1 Although a patent applicant is entitled to be his or her own lexicographer of
2 patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
3 347 F.2d 578, 580, 146 USPQ 69, 70 (CCPA 1965). The applicant must do so by
4 placing such definitions in the Specification with sufficient clarity to provide a
5 person of ordinary skill in the art with clear and precise notice of the meaning that
6 is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ 2d 1671,
7 1674 (Fed. Cir. 1994) (although an inventor is free to define the specific terms
8 used to describe the invention, this must be done with reasonable clarity,
9 deliberateness, and precision; where an inventor chooses to give terms uncommon
10 meanings, the inventor must set out any uncommon definition in some manner
11 within the patent disclosure so as to give one of ordinary skill in the art notice of
12 the change).
13 Anticipation
14 "A claim is anticipated only if each and every element as set forth in the claim
15 is found, either expressly or inherently described, in a single prior art reference."
16 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
17 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or
18 compositions, either generically or as alternatives, the claim is deemed anticipated
19 if any of the structures or compositions within the scope of the claim is known in
20 the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed.
21 Cir. 2001). "The identical invention must be shown in as complete detail as is
22 contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236,
23 9 USPQ2d 1913, 1920 (Fed. Cir. 1989). The elements must be arranged as
24 required by the claim, but this is not an ipsissimis verbis test, i.e., identity of
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