Ex parte TREGILGAS et al. - Page 5




          Appeal No. 96-0384                                         Page 5           
          Application No. 08/106,252                                                  


               Appellants urge that the claims herein are directed to                 
          controlling metal vacancies in the substrate by diffusing                   
          mercury out of the substrate whereas Jack is concerned with                 
          diffusing impurities into the substrate from the capping layer              
          (brief, page 3). In our view, however, the claims on appeal                 
          are not so limited                                                          
          as to support appellants' viewpoint.                                        
               In this regard, we are in agreement with the examiner                  
          (answer, page 6) that representative claim 1 simply does not                
          require diffusing mercury out of the substrate. It is well                  
          settled that the claims in a patent application are to be                   
          given their broadest reasonable interpretation during                       
          prosecution of a patent application.  In re Zletz, 893 F.2d                 
          319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).  Limitations               
          in the specification are not read into a claim to narrow the                
          scope of the claim by implicitly adding disclosed limitations               
          having no express basis in the claim.  See In re Prater, 415                
          F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).                       
          Moreover, when a claim does not recite allegedly                            
          distinguishable features, “appellant[s] cannot rely on them to              








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