Ex Parte EISELE - Page 9




          Appeal No. 2001-1786                                                        
          Application 08/420,796                                                      


          contained in the claim language, and only those limitations.  It            
          is improper to narrow the scope of the function beyond the claim            
          language.  It is equally improper to broaden the scope of the               
          claimed function by ignoring clear limitations in the claim                 
          language.  Ordinary principles of claim construction govern                 
          interpretation of the claim language used to describe the                   
          function.                                                                   
          After identifying the claimed function, one must then                       
          determine what structure, if any, disclosed in the specification            
          corresponds to the claimed function.  In order to qualify as                
          corresponding, the structure must not only perform the claimed              
          function, but the specification must clearly associate the                  
          structure with performance of the function.  This inquiry is                
          undertaken from the perspective of a person of ordinary skill in            
          the art.  Amtel Corp. v. Info. Storage Devices, Inc., 198 F.3d              
          1374, 1378-79, 53 USPQ2d 1225, 1227-28 (Fed. Cir. 1999).  See               
          Cardiac Pacemakers, Inc. v. St. Jude Medical Inc., 296 F.3d 1106,           
          1113, 63 USPQ2d 1725, 1730 (Fed. Cir. 2002).                                
          The first inquiry noted above results in a finding that                     
          the function performed by the processor means of claim 28 is not            
          the same as the function performed by patent claim 1.  As noted             
          above, the function of the claimed means cannot be narrowed or              

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