Appeal No. 95-2768
Application 08/019,700
from occurring.
At the hearing, appellants’ counsel referred to original
application claim 17, in conjunction with original claim 18, as
providing support for the limitation in question. As we 4
understand it, his position was that since claim 18 is dependent
on claim 17 and recites the projection and groove connection
(which prevents rotation of the cradle), claim 17, by virtue of
the doctrine of claim differentiation, supports a construction in
which the projection-and-groove is absent, i.e., the cradle would
be rotatable. This argument is without merit. The doctrine of
claim differentiation is applied in determining the scope of a
claim, see U.S. v. Telectronics, Inc., 857 F.2d 778, 784, 8
USPQ2d 1217, 1221-22 (Fed. Cir. 1988); it cannot be employed as a
basis for providing written description support for a
specifically claimed limitation.
Counsel also argued at the hearing that the projection 98
and groove (channel) 100 did not preclude rotation of the cradle
4 Original claims 17 and 18 read:
17. A bicycle carrier according to claim 14, wherein
said base includes a through-hole through which a
respective one of said supporting arm [sic] extends,
said base being slidable along said one supporting arm.
18. A bicycle carrier according to claim 17, wherein
said base and said one arm form a projection-and-groove
connection for locating said cradle with respect to said
one supporting arm.
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