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Office personnel are to give claims their broadest
reasonable interpretation in light of the supporting
disclosure. In re Morris, 127 F.3d. 1048, 1054-55,
44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations
appearing in the specification but not recited in
the claim are not read into the claim. In re Prater,
415 F.2d 1393, 1404-05, 162 USPQ 541, 550c551
(CCPA 1969). See also In re Zletz; 893 F.2d319,321­
22, 13USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During
patent examination the pending claims must be interpreted
as broadly as their terms reasonably allow....
The reason is simply that during patent prosecution
when claims can be amended, ambiguities should
be recognized, scope and breadth of language
explored, and clarification imposed.... An essential
purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous.
Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative
process.").
Where means plus function language is used to
define the characteristics of a machine 01' manufacture
invention, claim limitations must be interpreted to
read on only the structures or materials disclosed in
the specification and "equivalents thereof." (Two en
bane decisions of the Federal Circuit have made clear
that the Office is to interpret means plus function language
according to 35 U.S.C. 112, sixth paragraph. In
the first, In re Donaldson, 16 F.3d 1189, 1193,
29 USPQ2d 1845, 1848 (Fed. Cir. 1994), the court
held:
The plain and unambiguous meaning.of paragraph six
is that one construing means-plus-function language in a
claim mustlook to the specification and interpret thatlanguage
in light of the corresponding structure, material, or
acts described therein, and equivalents' thereof, to the
extent that the specification provides such "disclosure.
Paragraph six does not stateorevensuggest thatthe PTO
is exempt from this mandate, and there is no legislative
history indicating that, Congress intended that,the PTO
shouldbe. Thus,this court mustacceptthe plainandprecise
language of paragraph six.
Consistent. with Donaldson, in the second decision,
In re Alappat, 33 F.3d 1526, 1540,31 USPQ2d 1545,
1554 (Fed. Cir. 1994) (in bane), the Pederal Circuit
held:
Given Alappat's disclosure, itwas 'error for the Board
majority to interpret eachof the means clausesin claim 15
so broadly as to "read on any and every:means for per-
PATENTABILITY 2106
forming the function" recited,as it said it was doing, and
thento conclude thatclaim 15 is nothing more, than a process
claim wherein eachmeansclauserepresents a step in
that process. Contrary to suggestions' by the Commissioner,
this court's precedents do not support the Board's
view that. theparticular apparatus claims at issue,in this
case maybe viewed as nothing morethan processclaims.
Disclosure may be express, implicit or inherent.
Thus, at the outset, Office personnel must attempt to
correlate claimed means to elements set forth in the
written description. The written description includes
the original specification and the drawings. Office
personnel are to give the claimed means plus function
limitations their broadest reasonable interpretation
consistent with all corresponding structures or materials
described in the specification and their equivalents
including the manner in which the claimed functions
are performed. See Kemeo Sales, Inc. v. Control
Papers Company, Inc., 208 F.3d 1352, 54 USPQ2d
1308 (Fed. Cir. 2000). Further guidance in interpreting
tlie scope of equivalents is provided in MPEP §
2181 through§ 2186. . .
While it is appropriate to use the specification to
determine what applicant intends a term to mean, a
positive limitation from the specification cannot be
read into a claim that does not impose that limitation.
A broad interpretation of a claim by Office personnel
will reduce the possibility that the claim, when issued,
will be interpreted more broadly than is justified or
intended. An applicant can always amend a claim during
prosecution to better reflect the intended scope of
the claim.
Finally, when evaluating the scope of a claim, every
limitation in the claim must be considered. Office personnel
may not dissect a claimed invention into discrete
elements and then evaluate the elements in
isolation. Instead, the claim as a whole must be Considered.
See, e.g., Diamondv. Diehr, 450 U.S. at 188­
89, 209 USPQ at 9 ("In determining the eligibility of
respondents' claimed process for patent protection
under 101, their claims must be considered as a
whole. It is inappropriate to dissect the claims into old
and new elements and then to ignore the presence of
the old elements in the analysis. This is particularly
true in a process claim because a new combination of
steps in a process may be patentable even though all
the constituents of the combination were well known
and in common use before the combination was
made.").
2100-9 August2001