Appeal 2007-3540
Application 09/946,616
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, 162 USPQ 541, 550-51 (CCPA 1969);
6 In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369, 70 USPQ2d 1827,
7 1834 (Fed. Cir. 2004).
8 Although a patent applicant is entitled to be his or her own lexicographer of
9 patent claim terms, in ex parte prosecution it must be within limits. In re Corr,
10 347 F.2d 578, 580, 146 USPQ 69, 70 (CCPA 1965). The applicant must do so by
11 placing such definitions in the Specification with sufficient clarity to provide a
12 person of ordinary skill in the art with clear and precise notice of the meaning that
13 is to be construed. See also In re Paulsen, 30 F.3d 1475, 1480, 31 USPQ2d 1671,
14 1674 (Fed. Cir. 1994) (although an inventor is free to define the specific terms
15 used to describe the invention, this must be done with reasonable clarity,
16 deliberateness, and precision; where an inventor chooses to give terms uncommon
17 meanings, the inventor must set out any uncommon definition in some manner
18 within the patent disclosure so as to give one of ordinary skill in the art notice of
19 the change).
20 Anticipation
21 "A claim is anticipated only if each and every element as set forth in the claim
22 is found, either expressly or inherently described, in a single prior art reference."
23 Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d
24 1051, 1053 (Fed. Cir. 1987). "When a claim covers several structures or
25 compositions, either generically or as alternatives, the claim is deemed anticipated
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