Ex Parte FERREIRO - Page 10




          Appeal No. 2002-2034                                                          
          Application No. 09/175,080                                                    
          which depend therefrom.  We decline to exercise our authority                 
          under 37 CFR § 1.196(b) as, on this record.  The issue of whether             
          this disclosure may render the claimed invention, as interpreted              
          above, obvious within the meaning of 35 U.S.C. § 103 has not been             
          fully developed and would benefit from further prosecution on the             
          merits.                                                                       
               Turning now to claim 8, we note that the term “following” is             
          absent from the claim.  Rather, the claim requires that the send              
          operation be completed as a “single operation.”  The appellant                
          interprets this as requiring that all of the destinations are                 
          entered before any of the facsimile messages are sent.  We                    
          disagree with the appellant’s narrow interpretation of claim 8. In            
          examining a patent claim, the PTO must apply the broadest                     
          reasonable meaning to the claim language, taking into account any             
          definitions presented in the specification.  In re Yamamoto, 740              
          F.2d 1569, 1571, 222 USPQ 934, 936 (Fed. Cir. 1984).                          
               Here, unlike claim 1, there is no requirement that all the               
          transmissions to each individual destination occur after the entry            
          of the additional destinations.  Thus, we agree with the examiner             
          that the provision of the interrupt button by Fukushima                       
          anticipates the subject matter of claim 8 and we shall affirm this            
          portion of the rejection.                                                     
               Claim 15 is similar to claim 8, in that the transmission                 

                                          10                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007