Appeal No. 96-0122
Application No. 08/096,581
Appellant acknowledges (Brief, page 2) that [i]n all prior
art methods, it is necessary to perform at least two winding
operations (in addition to the loading operation).” If the
claimed invention is indeed “patentably distinct from the prior
art” (Brief, page 3), then appellant is under an obligation to
specifically define the claimed invention so that it does not
read on the prior art methods. When the claims on appeal are
given their broadest reasonable interpretation, they do not 2
preclude the additional winding operation of the acknowledged
prior art. The claimed invention can only be distinguished over
the acknowledged prior art by reading the formulae from the
disclosure into the step-plus-function limitations of the claims.
“During patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language
explored, and clarification imposed.” In re Zletz, 893 F.2d 319,
321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). The claims before
us require a calculation of a residual playing time (T ) (claims
R
1 and 5) and a calculation of an available total playing time
(T ) (claim 2), and such mathematical calculations can not beG 3
2 See In re Morris, 127 F.3d 1048, 1053-54, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997).
3“Mathematical precision should not be imposed for its own
sake.” Modine Manufacturing Co. v. International Trade
5
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