Appeal 2007-2374
Application 10/038,545
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
The claims on appeal should not be confined to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323,
75 USPQ2d 1321, 1334 (Fed. Cir. 2005) (en banc). During ex parte
prosecution, claims must be interpreted as broadly as their terms reasonably
allow since Applicants have the power during the administrative process to
amend the claims to avoid the prior art. In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
ANALYSIS
The Examiner contends that a reference value in Effenberger is a
previously measured ONU distance value that is used in the noted
comparison with a subsequently measured ONU distance value (Final
rejection 3 and 5). We agree with the Examiner’s reasoning that a
previously measured distance value in Effenberger becomes a reference
value for a subsequently measured distance value during the ordering of the
measured distance values “in ascending order from nearest to farthest” from
the OLT.
The disclosed and claimed invention does not explain how and at
what time a reference value becomes a “predetermined” reference value.
Thus, Appellant’s argument that a measured distance value is not a reference
value “determined beforehand” is without merit since the claims are
interpreted as broadly as their terms reasonably allow during ex parte
prosecution (Br. 7).
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