Appeal No. 2002-1383
Application No. 08/868,972
circuit bunch” within the meaning of the claims. For a prior art reference to anticipate in
terms of 35 U.S.C. § 102, every element of the claimed invention must be identically
shown in a single reference, but this is not an “ipsissimis verbis” test. In re Bond, 910
F.2d 831, 832, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990).
The two “characteristics” of a virtual circuit bunch offered at page 10 of the Brief
do not appear to be in the form of a limiting definition, but the remarks apparently refer
to embodiments of the invention disclosed in the specification. Claims are to be given
their broadest reasonable interpretation during prosecution, and the scope of a claim
cannot be narrowed by reading disclosed limitations into the claim. See In re Morris,
127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d
319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Prater, 415 F.2d 1393, 1404-
05, 162 USPQ 541, 550 (CCPA 1969).
In any event, we fail to see how even the “characteristics” may be thought
missing from the reference. In Subramanian, the virtual circuits are established as a
result of a single request. Further, appellants have not pointed out any disclosure in
Subramanian of a requirement for “additional hardware changes” in a switch for
implementation of the virtual circuits.
Finally, appellants assert that, since instant claim 19 depends from claim 18
(rejected under 35 U.S.C. § 103), claim 19 should not have been rejected under 35
U.S.C. § 102. (Brief at 11-12). While that may be true, appellants provide no
convincing reasoning as to why the subject matter of claim 19 should not be considered
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