Opinion

In re Sabatino

  • 480 F.2d 911
  • 178 U.S.P.Q. (BNA) 357
  • 1973 CCPA LEXIS 315
Court
Court of Customs and Patent Appeals
Filed
Jul 12, 1973
Status
Published
Author
Markey
On the bench
Almond, Markey
Cited by
6 cases

"Claim limitations defining the subject matter of the invention are never disregarded."

How later courts described this case

  • "Claim limitations defining the subject matter of the invention are never disregarded."

Written by the judges who cited it.

The opinion

MARKEY, Chief Judge

(dissenting).

With all respect, I must dissent. I agree that the precise issue is whether appellants’ disclosure supports the limitation, “wherein the diameter of said shanks permits limited entry into said hole.”

The only possible answer to the question “Does appellants’ shank diameter permit limited entry?” is “Yes.” Of course it also permits total entry, but that is not the question. If the claim read “total entry” and appellants’ diameter permitted only limited entry, the result would be different. But that is not the case.

Contrary to the rule requiring the broadest reasonable interpretation, the board and the principal opinion would read the word “only” before “limited.” I find no warrant in the record for so doing. It would be as reasonable to insert “at least.”

The board erred in finding no disclosure in appellants’ application of a relationship between the shank diameter and the entry thereof. Appellants’ drawing shows a relationship. Though it permits total entry, the diameter is shown as permitting an entry limited by contact with the opposed shank entering the hole from the opposite direction.

Whether Frischkorn’s drawing shows a shank tapered to limit entry, though vigorously argued, is not controlling where both appellants and Frisehkorn show a shank diameter “permitting” limited entry and the claim reads unambiguously on the disclosures of both.

To apply a claim limitation in haec verba is not to disregard it. So applied, the claim is supported by appellants’ disclosure. I would reverse.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.

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