holding that claims are given their broadest rea- sonable interpretation during examination “since the applicant may then amend his claims”
How later courts described this case
- holding that claims are given their broadest rea- sonable interpretation during examination “since the applicant may then amend his claims”
- before the application is granted, there is no reason to read into the claim the limitations of the specification
- “Claims yet unpatent- ed are to be given the broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims, the thought being to reduce the possi- bility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified.”
Written by the judges who cited it.
The opinion
WORLEY, Chief Judge
(concurring).
The court is indebted to counsel for the respective parties and amici curiae for the able and earnest fashion in which they have, in both argument and briefs, presented their understandably diverse positions.
One of the more interesting points raised is how far Congress intended to go in conferring patentable status on mental steps as they are intertwined in computer programs generally. It is questionable whether prior decisions denying patentability of purely mental steps, or the statute, read singly or together, can support a broad rule either sanctioning or prohibiting the patentability of such steps in relation to computer programs. Where the line will be drawn can only be determined on a case by case basis in building, as best we can, sound and intelligible precedent. While I agree here with the results reached by my colleagues I do not necessarily subscribe to all that is said.
Congress, of course, had no way of knowing in 1952 what lay in the test tube then or what would become a reality tomorrow. But it devised a statute — a model of legislative craftsmanship and foresight — broad enough to anticipate and nourish the technological explosion we have witnessed. Our patent system is a delicate balance of interests; it protects the fruits of the extraordinary efforts it demands of inventors compatibly with the public interest. It has large *1407 ly fostered the favorable climate resulting in the tremendous strides this country has made in reaching the pinnacle in the worldwide competition in the arts and sciences — from atomic energy to antihistamines, computers to catalysts, lasers to lunar landings. 1
So it is with no little surprise and concern that one learns of proposed patent “reforms”. I can appreciate, from my own Congressional experience, the difficulty of enacting legislation acceptable to all concerned. However, after having dealt with the patent statutes, particularly the 1952 Patent Act, for nearly twenty years as a member of this court, I have grave misgivings concerning the desirability or need for any substantive change in a system that has worked so well in following the constitutional mandate “to promote the Progress of Science and useful Arts.”
. Reminiscent of an old timer’s lament that he was just beginning to grasp the principle of the flashlight when along came radio.