Appeal 2007-1748
Application 10/679,908
We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75
USPQ2d 1321, 1329 (Fed. Cir. 2005)(en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). We
must be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the embodiment.
See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d
1865, 1868 (Fed. Cir. 2004):
Though understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.
The challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims. See E-
Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947, 1950
(Fed. Cir. 2003).
ANALYSIS
We affirm the rejection of claims 1-3, under 35 U.S.C. § 102(b) as being
anticipated by Smith. We cannot sustain the rejection of claims 4-9 under 35
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