Federal Circuit Declines to Infer What Applicant Should have Made Explicit in the Claims

In re Chatani, [2007-1150] (November 19. 2007) [MAYER, JACOBS, PROST] NON-PRECEDENTIAL The Federal Circuit affirmed the BPAI that the claims at issued were anticipated by a reference because the steps in the method claims were not limited to any particular order.
SIGNIFICANCE: The order of the steps in a method claim is only limited if the claim as properly interpreted says so.
BRIEF: During prosecution, claims must be given their “broadest reasonable interpretation.” The claim language on its face does not require sequential performance, and the Federal Circuit declined to infer what should have been made explicit in the claim during prosecution. The Federal Circuit said that to arrive at applicant's proposed construction would require improperly reading limitations into the claim. LOF: "Anticipation is a question of fact." Comparing the broadly construed claim with the prior art, the Federal Circuit concluded
there was substantial evidence to support the board’s anticipation determination.