Appeal No. 2004-1887
Application No. 09/430,469
In responding to the Appellant’s nonanticipation viewpoint, the
Examiner further elucidates her position on pages 9-10 of the
answer in the following manner:
With respect to the previous rejection of
claims 1-19, 21-25 [sic] under 35 U.S.C. 102(a)
as being anticipated by Model DCX [sic] Gas
Chromatograph Transmitter (July 1999),
Appellant argues that the manual control
provided by the GCX does not teach or suggest
actually modifying sample parameters of the
sample handling system based upon diagnostic
information of the sample handling system
itself. Examiner contends that the claim does
not require the diagnostic information to be
supplied by the sample handling system itself,
but rather the sample parameters are modified
based upon diagnostic information related to
the sample handling system. How the diagnostic
information is supplied to the process analyzer
is not recited in the claims. Office personnel
are to give claims their broadest reasonable
interpretation in light of the supporting
disclosure. In re Morris, 127 F.3d 1048, 1054-
55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997).
Limitations appearing in the specification but
not recited in the claim are not read into the
claim. In re Prater, 415 F.2d 1393, 1404-05,
162 USPQ 541, 550-551 (CCPA 1969). See also In
re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989).
The Examiner’s position is not well taken in a number of
respects. In the first place, the Examiner’s above quoted comments
reflect a potential misunderstanding of the claim 1 requirement
under review (e.g., the Examiner seems to believe the Appellant’s
specification teaches that the sample handling system supplies the
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