Appeal No. 2001-2692 Page 7
Application No. 08/789,001
appellants argue, "[t]he Examiner has not alleged that any of the prior art has any of
this [sic] elements." (Id.)
"Analysis begins with a key legal question -- what is the invention claimed?"
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). "Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, claim 1 specifies in pertinent part the following limitations:
a. a user interface for receiving a number of user provided parameters;
b. storing means for storing a predefined set of circuit design assembly
rules; and
c. assembly means coupled to said user interface and to said storing
means for assembling the first circuit design in accordance with said
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