Appeal 2007-0964
Application 09/984,929
PRINCIPLES OF LAW
Office personnel must rely on Appellant’s disclosure to properly determine
the meaning of the terms used in the claims. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting
what is meant by a word in a claim ‘is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper.’” In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed.
Cir. 2002) (emphasis in original) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed.Cir.1989)).
ANALYSIS
First issue:
Independent claims 22 and 29 recite “[a] computer readable medium on
which is embedded at least one program ….” Claims 23 through 28 and 34 are
dependent upon claim 22. We find that the claimed computer readable medium is
in reference to the “storage medium” discussed in the Specification. As discussed
in our finding of facts, the term storage medium does not include a carrier signal.
Thus, interpreting the claims in light of the Specification, we do not find that
independent claims 22 and 29 are directed to a carrier signal. We therefore find for
the Appellant as we disagree with the Examiner’s rationale in support of the
rejection under 35 U.S.C. § 101.
Second issue:
Claim 1 recites “distributing said electronic document after creating the
distribution list.” Appellant’s arguments center around Terada’s teaching of
creating a distribution list after the document is delivered. We concur with
Appellant’s characterization of Terada as it applies to the mode where the
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