Westlaw.
`
`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`P
`
`United States Court of Appeals,
`Federal Circuit.
`
`In re Charles P. MORRIS, Kenneth L. Pottebaum, and
`John D. Stricklin.
`
`No. 96- 1425.
`
`Decided Sept. 10, 1997.
`
`Rehearing Granted with no change in result and in
`
`Page 1
`
`35 U.S.C.A. §§ 131, 282.
`
`[2] Patents 291 @1019)
`
`291 Patents
`
`2911V Applications and Proceedings Thereon
`291k101 Claims
`
`291k101(2) k. Construction in general. Most
`Cited Cases
`
`banc suggestion declined Sept. 22, 1997.
`
`As initial matter, Patent and Trademark Office
`
`Applicant appealed from decision of the Board of
`
`Patent Appeals and Interferences denying its applica-
`
`tion for a patent for a disc drive acoustic isolator. The
`
`Court of Appeals, Plager, Circuit Judge, held that: (1)
`
`Patent and Trademark Office (PTO) was not required
`
`to interpret claims in patent application in same
`
`manner as courts were required to during infringement
`
`proceedings, and (2) claim was anticipated by prior
`an.
`
`Affirmed.
`
`West Headnotes
`
`[1] Patents 291 @1019)
`
`291 Patents
`
`2911V Applications and Proceedings Thereon
`291k101 Claims
`
`291k101(2) k. Construction in general. Most
`Cited Cases
`
`Patent and Trademark Office (PTO) was not re-
`
`quired to interpret claims in patent application in same
`
`manner as courts were required to during infringement
`
`proceedings; PTO could give claimed language its
`
`broadest reasonable interpretation during prosecution.
`
`(PTO) applies to verbiage of proposed patent claims
`
`broadest reasonable meaning of words in their ordi-
`
`nary usage as they would be understood by one of
`
`ordinary skill in the art, taking into account whatever
`
`enlightenment by way of definitions or otherwise that
`
`may be afforded by written description contained in
`
`applicant's specification. 35 U.S.C.A. §§ 131, 282.
`
`[3] Patents 291 @1130)
`
`291 Patents
`
`2911V Applications and Proceedings Thereon
`
`291k113 Appeals from Decisions of Com-
`missioner of Patents
`
`291k1 13(7) k. Presumption as to correctness
`of decision below. Most Cited Cases
`
`Once Patent and Trademark Office (PTO) has
`
`made initial determination that specified claims are
`
`not patentable, burden of production falls upon ap-
`
`plicant to establish entitlement to patent.
`
`[4] Patents 291 $99
`
`291 Patents
`
`2911V Applications and Proceedings Thereon
`
`291k99 k. Description of invention in speci-
`fication. Most Cited Cases
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`1
`L&H CONCEPTS 2002
`SKYHAWKE TECHNOLOGIES V. L&H CONCEPTS
`|PR2014-00438
`
`

`

`Page 2
`
`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`(Formerly 291k97)
`
`Public notice is important objective of patent
`
`fice, U.S. Department of Commerce, Arlington, VA,
`
`prosecution before Patent and Trademark Office
`(PTO).
`
`for appellee. Of counsel are Albin F. Drost, Deputy
`Solicitor, Kenneth R. Corsello and David J. Ball, Jr.,
`Associate Solicitors.
`
`Nancy J. Linck, Solicitor, Patent and Trademark Of-
`
`[5] Patents 291 @1010)
`
`291 Patents
`
`29lIV Applications and Proceedings Thereon
`291k101 Claims
`
`29 1k101 (2) k. Construction in general. Most
`Cited Cases
`
`Claim language in patent application for a disc
`
`drive acoustic isolator, requiring “compliance area” to
`
`be “integrally formed as a portion of’ the housing, did
`
`not require the compliance area to be fiised together
`
`with the housing; accordingly, claim was anticipated
`
`by prior art patent for device that had compliance area
`
`fixedly attached to support member. 35 U.S.C.A. §§
`13 1, 282.
`
`[6] Patents 291 €399
`
`ORDER
`
`Appellants Morris et al. petition for rehearing of
`
`the decision of this court issued under date of August
`
`18, 1997. Appellants point to several statements in the
`
`issued opinion which, in their view, entitle them to
`
`rehearing of their appeal. After thorough review of the
`
`petition, the court grants the petition for rehearing for
`
`the limited purpose of laying to rest any doubts about
`
`the court's views as expressed in the opinion;
`
`the
`
`judgment affirming the decision of the Board is reaf-
`firmed.
`
`SO ORDERED.
`
`Before PLAGER, CLEVENGER, and BRYSON,
`
`Circuit Judges.
`
`REVISED OPINION
`
`291 Patents
`
`PLAGER, Circuit Judge.
`
`29lIV Applications and Proceedings Thereon
`
`291k99 k. Description of invention in speci-
`fication. Most Cited Cases
`
`Patent and Trademark Office (PTO) was obli-
`
`gated to reject claim in patent application when ap-
`
`plicants failed precisely to define in written descrip-
`
`tion the disputed language, and there was reasonable
`alternative definition. 35 U.S.C.A. §§ 131, 282.
`
`*1049 Richard H. Stern, Ablondi, Foster, Sobin &
`
`Davidow, Washington, DC, for appellants. Of counsel
`
`are Bill D. McCarthy, Randall K. McCarthy, Phillip L.
`
`Free, Jr., McCarthy & Associates, Inc., Oklahoma
`
`City, OK, and Edward P. Heller, III, Seagate Tech-
`
`nology, Inc., Scotts Valley, CA.
`
`Appellants Morris, Pottebaum, and Stricklin ap-
`
`peal from a decision of the Board of Patent Appeals
`
`and Interferences in Application Ser. No. 07/673,967,
`dated March 28, 1996. In that decision the Board
`
`affirmed a rejection of appellants' claims 1, 5 and 20
`under 35 U.S.C. § 102(b). Because the Board did not
`
`err in its reading of appellants' claims, we affirm.
`
`BACKGROUND
`
`On March 22, 1991, appellants filed a patent ap-
`
`plication entitled “Acoustic Isolator for a Disc Drive
`
`Assembly.” The application was assigned Ser. No.
`
`07/673,967 by the United States Patent and Trademark
`
`Office *1050 (“PTO”) and prosecution of the appli-
`
`cation proceeded.
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`2
`
`

`

`Page 3
`
`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`The problem addressed in the application was the
`
`sympathy with the motors, particularly if the resonant
`
`acoustic noise generated by a disc drive as a result of
`
`frequency of the motor corresponds to the natural
`
`the physical movement of the internal motors. Ac-
`
`frequency of either of the housing covers.
`
`cording to the application, modern disc drives such as
`
`used in personal computers include two motors, also
`
`referred to as “excitation sources.” The first is a spin-
`
`dle motor that spins the magnetic discs upon which
`data is stored. The second is an actuator motor that
`
`moves a read/write head across the discs to access
`
`specific locations or “tracks” on the discs. These
`
`motors are mounted in a disc housing. The housing is
`
`typically comprised of an upper and a lower housing
`
`cover that mate together to enclose the entire disc
`
`drive. The problem described in the application is that
`
`any vibration of the motors is transmitted to the
`
`housing by virtue of the connection of the motors to
`
`Prior art solutions addressed this problem by
`
`adding an isolator between the motors and the hous-
`
`ing. For example, United States Patent No. 4,491,888
`
`(the “Brown” patent) taught the use of an annular
`
`elastomeric pad to absorb the vibrations. As described
`
`and shown in Brown, the “elastomeric member or pad
`
`100 is engaged between the base plate [32] and lower
`
`casing [12]
`
`to assist in dampening actuator-induced
`
`vibrations.” Brown, Col. 7, lines 32-47. Figure 2 of
`
`Brown, showing a cross-section of the pad 100 and
`
`surrounding housing 12, is reproduced below.
`
`the housing. This causes the housing to vibrate in
`IQ
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`
`The disadvantage of Brown, according to appel-
`
`lants, was that it required an additional part. This may
`
`not seem significant to those unfamiliar with the disc
`
`drive industry, but, in the cost-sensitive and constantly
`
`miniaturizing world of disc drive manufacturers, ad-
`
`ditional pieces of equipment add to the cost of the disc
`drive and consume valuable real estate in the drive.
`
`Appellants' approach was different from the ap-
`
`proach taken in Brown. Instead of adding an addi-
`
`tional part, appellants thinned down a portion of the
`
`motor casing in the area where the motor attached to
`
`the casing. This thinned-down area, referred to as a
`
`“compliance area,” absorbs most of the kinetic energy
`
`produced by the motor because of its reduced thick-
`
`ness, without radiating that energy outward to the
`
`remainder of the housing. Appellants maintained in
`
`their application that acoustic noise can be signifi-
`
`cantly reduced using this approach, and without addi-
`
`tional parts.
`
`Figure 3 of the appellants' application, reproduced
`
`below, shows a partially detailed cross-sectional view
`
`of a disc drive according to their invention. The disc
`
`drive includes a top housing cover 12A and a bottom
`
`housing cover 14A. A motor 16 is attached to the top
`
`and bottom covers by screws 32A. A portion of the top
`and bottom covers 50A is thinned-down in an area
`
`extending radially away from the screws 32A. This
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`3
`
`

`

`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`“compliance area,” *1051 due to its reduced thickness
`
`tic noise reduction of the applicants claimed invention.
`
`relative to the remaining housing, achieves the acous-
`
`Page 4
`
`IL
`
`
`
`.11.,
`
`LEI,
`I!
`
`
`
`
`"'-"“‘\\\\\\‘m
`
`
`\sat
`
`
`
`
`E——
`
`FIE-
`Brown.FNl The admitted prior art was essentially
`identical to applicant's Figure 3, shown above, but the
`
`The application included 22 claims. Original claim
`1 read:
`
`1. An improved acoustic isolation apparatus for
`
`reducing the acoustic noise produced by a system
`
`having at least one excitation source disposed so as
`
`to impart vibrations to a structure member coupled
`
`thereto, the acoustic isolation apparatus comprising:
`
`at least one acoustic isolator providing deter-
`
`mined compliance of the structure member in a se-
`
`lected area of compliance disposed to impede cou-
`
`pling of the vibrations of the excitation source and
`the structure member.
`
`In a first office action, claim 1 was rejected as
`
`being anticipated under 35 U.S.C. § 102(b) in view of
`
`appellants' admitted prior art and also in view of
`
`“compliance area” amounted to a counter-sink hole
`
`simply big enough to receive the head of the screw
`32A.
`
`FNl. All of the other claims were also re-
`
`jected on the same grounds. Because all of
`
`the appealed claims stand or fall with claim
`1, we will confine our discussion to the
`
`prosecution history of claim 1.
`
`In response to this rejection, appellants amended
`
`claim 1 as follows, with language removed enclosed in
`
`square brackets and language added underlined:
`
`1. (Amended) An improved acoustic isolation
`
`apparatus for reducing the acoustic noise produced
`
`by a system having at least one excitation source
`
`disposed so as to impart vibrations to a [structure]
`
`support member coupled thereto, the acoustic iso-
`
`lation apparatus comprising:
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`4
`
`

`

`Page 5
`
`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`at least one acoustic [isolator providing deter-
`
`1. (Twice Amended) An improved acoustic iso-
`
`mined compliance of the structure member in]
`
`lation apparatus for reducing the acoustic noise
`
`compliance area integrally formed on a selected
`
`area of [compliance disposed] the support member
`
`so as to impede coupling of the vibrations of the
`
`excitation source [and] t_o the [structure] support
`member.
`
`produced by a system having at least one excitation
`
`source [disposed so as to impart vibrations] attached
`
`at a contact point to a support member, the acoustic
`
`isolation apparatus comprising:
`
`at least one acoustic compliance area integrally
`
`*1052 In addition, appellants argued that Brown
`
`formed on a selected area of the support member so
`
`is distinguishable because it “does not teach or suggest
`
`as to impede selected freguencies of acoustic noise
`
`an acoustic isolator apparatus which is integrally
`
`resulting from the coupling of the vibrations of the
`
`formed as part of the housing.” The appellants then
`
`excitation source to the support memberfi
`
`went on to describe Brown in general terms and con-
`
`acoustic compliance area formed on the support
`
`cluded that “it is clear that the base plate and housing
`
`member such that increased compliance is provided
`
`arrangement disclosed in Brown '888 is completely
`
`to the support member substantially surrounding the
`
`different in structure than the acoustic isolator appa-
`
`contact point.
`
`ratus recited in Applicants' claims 1-22, as amended.”
`
`In response to appellants' amendment and related
`
`Appellants vigorously contested the examiner's
`assertion that the Biermeier resilient section achieved
`
`arguments, the examiner entered a new ground of
`
`any acoustic reduction. If Biermeier achieved any
`
`rejection. Claim 1 was rejected under the same section
`
`acoustic reduction, according to appellants, “it was
`
`of the statute, Section 102(b), but using a different
`reference, Biermeier et al., U.S. Patent No. 4,780,777.
`
`Biermeier showed a thin, substantially horse-shoe
`
`shaped resilient section adjacent the spindle of the
`
`drive shaft in a disc drive housing to provide a support
`
`for the spindle of a disc and to achieve bearing pre-
`
`load. Biermeier, Col. 4, lines 53-68. According to the
`
`examiner, Biermeier showed “a resilient wall region
`
`15 integrally formed on the housing 1 which would
`
`impede coupling of vibrations of the excitation source
`
`38 to the support member 1 while maintaining rigidity
`7
`fiirther
`of the housing assembly.’ The examiner
`stressed that Biermeier does show “an acoustic isola-
`
`tor apparatus which is integrally formed as part of the
`
`housing.”
`
`pure happenstance.”
`
`After considering the amendment and related
`
`arguments, the examiner shifted back to his original
`
`ground for rejection-Brown. In a third offlce action,
`
`the examiner again rejected claim 1 as being antici-
`
`pated by Brown under Section 102(b). According to
`the examiner, “Brown et al show an acoustic com-
`
`pliance area 100 integrally formed on a selected area
`
`of the support member 12 so as to impede selected
`
`frequencies of acoustic noise resulting from the cou-
`
`pling of the vibrations of the excitation source 92 to
`
`the support member 12.” The examiner considered the
`
`appellants' arguments with respect to Biermeier moot
`
`in view of the new ground of rejection.
`
`The appellants responded by once again amend-
`
`A third amendment to claim 1
`
`followed. The
`
`ing their claim and by attempting to distinguish the
`cited reference. Claim 1 after this second amendment
`
`amended claim 1 now read:
`
`read:
`
`1. (Thrice Amended) An improved acoustic iso-
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`5
`
`

`

`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`lation apparatus for reducing the acoustic noise
`
`produced by a system having at least one excitation
`
`source attached at a contact point to a support
`
`member, the acoustic isolation apparatus compris-
`mg:
`
`Page 6
`
`10. An improved acoustic isolation appa-
`
`ratus for a disc drive assembly having an
`
`external housing with a lower surface and a
`
`top surface, the disc drive assembly in-
`
`cluding at least one excitation source se-
`
`at least one acoustic compliance area integrally
`
`cured to and between the lower and top
`
`formed [on] as a portion of a selected area of the
`
`surfaces of the housing at contact points,
`
`support member so as to impede selected frequen-
`
`whereby vibration of the excitation source
`
`cies of acoustic noise resulting from the coupling of
`
`is coupled to the housing to cause the
`
`the vibrations of the excitation source to the support
`
`housing to vibrate so as to create acoustic
`
`member, the acoustic compliance area formed [on]
`
`noise, the improved acoustic isolation ap-
`
`as a portion of the support member such that [in-
`
`paratus comprising:
`
`creased compliance is provided to]
`
`the support
`
`member has increased compliance substantially
`
`surrounding and extending radially about the con-
`
`tact point.
`
`at least one high compliance area formed
`
`as a portion of one of the surfaces of the
`
`housing which surrounds and extends ra-
`
`dially about the contact point on said sur-
`
`Appellants tried to distinguish Brown on the
`
`face, the high compliance area having a
`
`ground that the patent “does not teach or suggest an
`
`acoustic isolator apparatus which is ‘integrally formed
`
`thickness substantially less that the thick-
`ness of the remainder of the surface, the
`
`as a portion of’ the *1053 housing.” Moreover, ac-
`
`high compliance area minimizing the
`
`cording to appellants, Brown failed to accomplish the
`
`passage of the excitation source vibrations
`
`main objectives of the invention,
`
`that of reducing
`
`space and parts requirements. Because the acoustic
`
`from the contact point to the remainder of
`the surface so that overall acoustic noise is
`
`compliance area of the claimed invention is “inte-
`
`reduced thereby.
`
`grally formed as a portion of the support member,”
`
`appellants argued their claimed invention achieves the
`
`goal of reducing acoustic noise without the concomi-
`
`tant disadvantages of Brown.
`
`Dissatisfied with the examiner's rejection, appel-
`
`lants appealed to the Board of Patent Appeals and
`
`Interferences. The Board framed the issue presented
`
`on appeal as “the propriety of the examiner's consid-
`
`The examiner was unpersuaded. Accordingly, he
`
`ering the elastomeric pad 100 formed of foam rubber
`
`made the rejection final. FNZ See 37 C.F.R. § 1.113. In
`the final rejection the examiner reiterated his position
`
`and best shown in figures 2 and 3 of Brown as com-
`
`prising the claimed acoustic compliance area of a
`
`that “the language ‘integrally formed as a portion of
`
`support member or of a housing.” Appellants argued
`
`(e.g. a selected area, the housing assembly or the
`
`before the Board that the elastomeric pad 100 of
`
`support member) still reads on the acoustic compli-
`ance area 100 of Brown et al.”
`
`Brown is neither “integrally formed” nor “a portion
`
`of’ the housing assembly to which it is attached, as
`
`those terms are used in appellants' patent application.
`
`FN2. The examiner did, however, allow
`
`Appellants urged that the proper interpretation of the
`
`claims 10-19 and 23 and merely objected to
`
`claim 21. Claim 10, for example, reads:
`
`disputed language in their proposed claim, in light of
`
`the specification, required the examiner to limit the
`
`scope of the claim to a thinned-down portion of a
`
`© 2014 Thomson Reuters. No Claim to Orig. US Gov. Works.
`6
`
`

`

`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`housing. The Board disagreed and therefore affirmed
`
`[2] The Solicitor is correct, and we reject appel-
`
`Page 7
`
`the examiner's rejection.
`
`The Board cited numerous CCPA decisions in-
`
`cluding In re Kohno, 55 C.C.P.A. 998, 391 F.2d 959,
`157 USPQ 275 (CCPA 1968), In re Dike, 55 C.C.P.A.
`
`1172, 394 F.2d 584, 157 USPQ 581 (CCPA 1968), In
`
`re Larson, 52 C.C.P.A. 930, 340 F.2d 965, 144 USPQ
`
`347 (CCPA 1965), and In re Clark, 41 C.C.P.A. 974,
`
`214 F.2d 148, 102 USPQ 241 (CCPA 1954), in which
`
`the term “integral” had been given a broader meaning
`
`than that advanced by the appellants. According to the
`
`Board, “the term ‘integral’ is a relatively broad term
`
`inclusive of means for maintaining parts in a fixed
`
`relationship as a single unit.” The appellants' inter-
`
`pretation, according to the Board, irnpermissibly re-
`
`quired them to read limitations of the specification
`
`into the appealed claims. Under the proper interpreta-
`
`tion of the disputed language, the Board concluded
`
`that the examiner correctly rejected claim 1 as being
`
`anticipated by Brown. This appeal followed.
`
`DISCUSSION
`
`[1] As a preliminary matter the parties disagree
`
`about the proper claim construction methodology to
`
`be employed by the PTO. Appellants argue that this
`court's in bane decisions in Markman v. Westview
`
`Instruments,
`
`52 F.3d 967,
`
`34 USPQ2d
`
`1321
`
`(Fed.Cir.1995) (in banc), afl'd, 517 US. 370, 116
`S.Ct. 1384, 134 L.Ed.2d 577, 38 USPQ2d 1461
`
`(1996), and in In re Donaldson, 16 F.3d 1189, 29
`
`USPQ2d 1845 (Fed.Cir.1994) (in banc), require the
`
`PTO in the course ofprosecution to interpret claims in
`
`the same manner as courts are required to during in-
`
`fringement proceedings. The Solicitor responds by
`
`arguing that our past decisions permit the PTO to give
`
`claim language its “broadest reasonable interpreta-
`
`In re Zletz,
`tion” during prosecution, citing*1054
`893 F.2d 319, 13 USPQ2d 1320 (Fed.Cir.1989), In re
`
`Yamamoto,
`
`740 F.2d
`
`1569,
`
`222 USPQ 934
`
`(Fed.Cir.1984), and Burlington Indus. V. Quigg, 822
`F.2d 1581, 3 USPQ2d 1436 (Fed.Cir.1987).
`
`lants' invitation to construe either of the cases cited by
`
`appellants so as to overrule, sub silentio, decades old
`case law. Some cases state the standard as “the
`
`broadest reasonable interpretation,” see, e.g., In re
`Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057,
`
`1059 (Fed.Cir.1993), others include the qualifier
`
`“consistent with the specification” or similar lan-
`
`guage, see, e.g., In re Bond, 910 F.2d 831, 833, 15
`USPQ2d 1566, 1567 (Fed.Cir.1990). Since it would
`
`be unreasonable for the PTO to ignore any interpretive
`
`guidance afforded by the applicant's written descrip-
`
`tion, either phrasing connotes the same notion: as an
`
`initial matter, the PTO applies to the verbiage of the
`
`proposed claims the broadest reasonable meaning of
`
`the words in their ordinary usage as they would be
`
`understood by one of ordinary skill in the art, taking
`
`into account whatever enlightenment by way of defi-
`
`nitions or otherwise that may be afforded by the
`
`written description contained in the applicant's speci-
`fication.
`
`Had either of the cases cited by appellants in-
`
`tended to make the dramatic shift in our jurisprudence
`
`suggested by appellants one can safely assume they
`
`would have done so explicitly. We need not, however,
`
`rely solely on assumption or inference. Both cases are
`
`readily distinguishable from the present case. The
`
`first, Markman, involved an infringement suit in the
`district court. This is a distinction with a difference.
`
`Patents in infringement suits are presumed valid by
`
`statute. 35 U.S.C. § 282 (1994). No such presumption
`attaches before the PTO.FN3 It is the PTO's duty to
`assure that the statutory requirements for patentability
`
`are met. See 35 U.S.C. § 131 (1994). These require-
`
`ments include 35 U.S.C. §§ 101 (utility), 102 (novel-
`
`ty), § 103 (nonobviousness), § 112 1] 1 (enablement,
`
`written description, and best mode) and § 112 1] 2
`
`(particularly point out and distinctly claim).
`
`FN3. Despite the language in Section 102,
`
`there is no such presumption before the is-
`
`suance ofa patent. Compare 35 U.S.C. § 102
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`Page 8
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`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`(“A person shall be entitled to a patent unless
`
`may be expressed as a means or step for performing a
`
`....”) with 35 U.S.C. § 282 (“A patent shall be
`
`specified function without the recital of the structure,
`
`presumed valid”). The presumption does not
`
`*1055 material, or acts in support thereof”). The PTO
`
`attach until a patent has issued.
`
`argued that they were permitted to interpret the claims
`
`[3][4] It would be inconsistent with the role as-
`
`signed to the PTO in issuing a patent to require it to
`
`interpret claims in the same manner as judges who,
`
`post-issuance, operate under the assumption the patent
`
`is valid. The process of patent prosecution is an in-
`teractive one. Once the PTO has made an initial de-
`
`termination that specified claims are not patentable
`
`(the prima facie case concept, see In re Oetiker, 977
`F.2d
`1443,
`1448,
`24 USPQ2d
`1443,
`1447
`
`(Fed.Cir.l992) (Plager, J. concurring)), the burden of
`
`production falls upon the applicant to establish enti-
`
`tlement to a patent. See In re Spada, 911 F.2d 705,
`708, 15 USPQ2d 1655, 1658 (Fed.Cir.l990); In re
`
`as broadly as the claim language permitted without the
`
`constraint of the written description contained in the
`
`specification. The Donaldson court,
`
`in bane, noted
`
`that the statute requires that claims so written “shall be
`
`construed to cover the corresponding structure, mate-
`
`rial, or acts described in the specification and equiv-
`alents thereof” Donaldson,
`16 F.3d at 1193, 29
`
`USPQ2d at 1848-49. The court found no basis in the
`
`statute or legislative history for exempting the PTO
`
`from this statutory mandate. Therefore the PTO is
`
`required to consult the specification during examina-
`
`tion in order to determine the permissible scope of the
`claim.
`
`King, 801 F.2d 1324, 1327, 231 USPQ 136, 138
`
`It is enough to point out that this case does not
`
`(Fed.Cir.l986) (burden shifts to appellant after the
`
`involve claims written in means-plus-function lan-
`
`PTO establishes a prima facie case of anticipation).
`
`guage to distinguish Donaldson from the present case.
`
`This promotes the development of the written record
`
`There is no comparable mandate in the patent statute
`
`before the PTO that provides the requisite written
`
`that relates the claim scope of non-§ 112 1] 6 claims to
`
`notice to the public as to what the applicant claims as
`
`particular matter
`
`found in the specification. See
`
`the invention. As the Supreme Court recently af-
`
`firmed, public notice is an important objective of
`
`Eastman Kodak Co. V. Goodyear Tire & Rubber Co.,
`114 F.3d 1547, 1552, 42 USPQ2d 1737, 1740
`
`patent prosecution before the PTO. See Warn-
`er-Jenkinson Co. V. Hilton Davis Chem. Co., --- U.S.
`
`----, ----, 117 S.Ct. 1040, 1051, 137 L.Ed.2d 146
`
`(1997)
`
`(establishing a rebuttable presumption of
`
`prosecution history estoppel when the public record is
`
`unclear as to whether the prior art precipitated an
`
`amendment to the claims in order to give “proper
`
`deference to the role of claims in defining an invention
`
`and providing public notice.”).
`
`Although In re Donaldson comes closer to the
`
`(Fed.Cir.l997) (“The claim language itself defines the
`
`scope of the claim.”).
`
`We need not simply rely on this distinction,
`
`however, for the Donaldson court went on to dispose
`
`of the precise argument that appellants now make. The
`
`PTO had argued that our prior case law, as discussed
`
`above, permitted examiners to give claims their
`
`“broadest reasonable interpretation” during prosecu-
`
`tion. See, e.g., In re Prater, 56 C.C.P.A. 1381, 415
`F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA
`
`present case, it still fails to prove appellants' point. In
`
`1969). Limiting claims written in accordance with §
`
`Donaldson, this court considered the question of how
`
`112 1] 6 to what is described in the specification and
`
`the PTO was required to interpret claims drafted
`
`equivalents thereof, according to the PTO, would
`
`pursuant to 35 U.S.C. § 112 1] 6, claims in so-called
`
`conflict with this practice. Donaldson itself pointed
`
`“means-plus-function” language. See 35 U.S.C. § 112
`
`out that the court's holding is readily harmonized with
`
`1] 6 (1994) (“An element in a claim for a combination
`
`that principle. Requiring the PTO to interpret claims in
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`Page 9
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`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`light of the specification “merely sets a limit on how
`
`We conclude that
`
`the PTO's interpretation is
`
`broadly the PTO may construe means-plus-function
`
`language under the rubric of ‘reasonable interpreta-
`tion.’ ” Donaldson, 16 F.3d at 1194, 29 USPQ2d at
`
`the evidence before the
`reasonable in light of all
`Board. As the cases cited above demonstrate, our
`
`predecessor court had on several prior occasions in-
`
`1850. Therefore, it cannot reasonably be argued that
`
`terpreted the term “integral” to cover more that a
`
`Donaldson overruled our long line of case law that
`
`permits the PTO to give claims their “broadest rea-
`
`In re Kohno, 55
`unitary construction. See, e.g.,
`C.C.P.A. 998, 391 F.2d 959, 157 USPQ 275 (CCPA
`
`sonable interpretation.”
`
`[5] The question then is whether the PTO's in-
`
`terpretation of the disputed claim language is “rea-
`
`sonable.” Appellants contend that the Board's inter-
`
`pretation is unreasonable when the claim language is
`
`properly construed in light of the specification and
`
`other extrinsic evidence. In particular, appellants ar-
`
`gue that the phrase “integrally formed as a portion of’
`
`requires the compliance area to be “fused together”
`
`with the housing “to form a single part-such as by
`
`casting them as a molded article, machining a single
`
`piece of material to form them, welding them together,
`
`or otherwise joining them in a firm and substantially
`
`permanent manner.” Brief for Appellants at 18. Be-
`
`cause the elastomeric pad of Brown is “removably
`
`coupl[ed],” according to appellants, Brown does not
`
`1968), *1056In re Dike, 55 C.C.P.A. 1172, 394 F.2d
`
`584, 157 USPQ 581 (CCPA 1968), In re Larson, 52
`
`C.C.P.A. 930, 340 F.2d 965, 144 USPQ 347 (CCPA
`
`1965), and In re Clark, 41 C.C.P.A. 974, 214 F.2d
`
`148, 102 USPQ 241 (CCPA 1954). This court has also
`
`endorsed that
`
`interpretation. See, e.g., Advanced
`
`Cardiovascular Sys. V. Scimed Life Sys., 887 F.2d
`1070, 1074, 12 USPQ2d 1539, 1542 (Fed.Cir.1989)
`
`(nothing of record limited “integral” to mean “of
`
`one-piece” construction). Appellants' attempt to dis-
`
`tinguish these cases misses the point. Absent an ex-
`
`press definition in their specification, the fact that
`
`appellants can point to definitions or usages that
`
`conform to their interpretation does not make the
`PTO's definition unreasonable when the PTO can
`
`point to other sources that support its interpretation.
`
`anticipate claim 1 when properly construed. Id.
`
`Appellants argue that their claim does not just
`
`The examiner stated in his third rejection that he
`
`interpreted the phrase “integrally formed as a portion
`
`of a selected area of the support member” to read on
`
`Brown. By this the examiner clearly meant that he
`
`interpreted the phrase “integrally formed” to encom-
`
`pass devices that had a compliance area fixedly at-
`
`tached to a support member, as in Brown. The exam-
`
`iner reiterated this interpretation in the final rejection.
`
`“It is the Examiner's position that the language ‘inte-
`
`grally formed as a portion of (e.g. a selected area, the
`
`housing assembly or the support member) still reads
`
`on the acoustic compliance area 100 of Brown et al.”
`
`require that the acoustic compliance area be integrally
`
`formed from the support member. Instead, claim 1
`
`requires that the area be “integrally formed as a por-
`
`tion of” the support member. This does not change our
`
`conclusion. Portion is defined as a “part or share of
`
`something.” Webster’s Third New International Dic-
`
`tionary 1768 (1986). Thus this term tells us nothing
`
`about whether the acoustic compliance area is re-
`
`movable or separable from the support member. A
`
`slice of pie can be considered a ‘portion of’ the pie
`
`while also being removable. We conclude that the
`
`added limitation does not overcome the rejection.
`
`The Board also adopted this interpretation citing nu-
`
`The appellants urge us to consult the specification
`
`merous cases in which the word “integral” had been
`
`and some of the cited prior art, including Brown, and
`
`interpreted broadly to encompass multi-piece struc-
`tures.
`
`interpret the disputed language more narrowly in view
`
`thereof. When read in light of this material, according
`
`to applicants,
`
`the “true” meaning of the phrase
`
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`Page 10
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`127 F.3d 1048, 44 U.S.P.Q.2d 1023
`
`(Cite as: 127 F.3d 1048)
`
`emerges. We decline to attempt to harmonize the
`
`done, particularly when the public must rely on the
`
`applicants'
`
`interpretation with the application and
`
`prior art. Such an approach puts the burden in the
`
`wrong place. It is the applicants' burden to precisely
`define the invention, not the PTO's. See 35 U.S.C. §
`
`written record to define the resulting property right.
`See Wamer—Jenkinson, --- US. at ----, 117 S.Ct. at
`1040.
`
`112 1] 2 (“The specification shall conclude with one or
`
`We understand the difficulties that can arise in
`
`more claims particularly pointing out and distinctly
`
`claiming the subject matter which the applicant re-
`
`gards as his invention.”). While it is true that the
`
`claims were not rejected on the ground of indefmite-
`
`ness, this section puts the burden of precise claim
`
`drafting squarely on the applicant.
`
`The problem in this case is that the appellants
`
`prosecution. This appeal is a case in point. The PTO
`
`initially rejected claim 1 in light of Brown. Appellants
`amended their claim to add the limitation that the
`
`compliance area was “integrally formed on” the sup-
`
`port member. This amendment seemed to overcome
`
`the examiner's rejection because in response the ex-
`
`aminer produced a new ground