Appeal 2007-2649
Application 10/235,998
To meet claim 1’s limitation that the ear-positioned second electrode
patch “provides shielding,” the Examiner cites Ohtake as providing an
electrode with “a base 5 provided with a built-in conductive film for
electrical shielding of electrodes” (id.). The Examiner concludes that one of
ordinary skill would have considered it obvious “to modify Schulze to have
electrical shielding in order to insulate from electrical noise” (id.).
Appellants argue that when viewed in light of paragraph [24] of the
Specification, “[p]art of the invention, as a whole, is that the metal contact
material of the ear electrode patch acts as a shield for other sensors” (Br. 7).
In contrast, Appellants argue, Ohtake “merely teaches that an optional layer
of conductive material can be added to the waterproofing of the system of
Ohtake to shield the electrode from noise” (id.). Appellants argue that
Ohtake does not “teach or suggest that: (i) the electrode patch itself acts as
the shield (i.e., the layer 5 in Ohtake acts as a shield for separate electrodes
11) or (ii) that the electrode patch act as a shield for other sensors (i.e., the
layer 5 in Ohtake acts as a shield for electrodes 11, not for other sensors)”
(id.; see also Reply Br. 2-4).
We are not persuaded by this argument. “[W]hile it is true that claims
are to be interpreted in light of the specification and with a view to
ascertaining the invention, it does not follow that limitations from the
specification may be read into the claims.” Sjolund v. Musland, 847 F.2d
1573, 1581 (Fed. Cir. 1988) (emphasis in original); see also In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (“[L]imitations are not to be
read into the claims from the specification.”).
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