Appeal No. 96-2446
Application 08/246,179
consistent with the specification, and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). Moreover, limitations are not to
be read into the claims from the specification. In re Van Geuns, 988 F.2d 1181, 1184,
26 USPQ2d 1057, 1059 (Fed. Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13
USPQ2d 1320, 1322 (Fed. Cir. 1989). Appellants have set forth claims 1-9 in "means
plus function" format, but have provided no argument as to any structure, materials or acts
described in the specification or their equivalents required for a proper interpretation of the
claimed "means." Therefore, we do not find that the language of claims 1 and 10 require
"simultaneous storing" as explicitly recited in the language of claim 12.
We find that the examiner has not met the burden of setting forth a prima facie case
of obviousness in rejecting claims 1-12. Our reviewing court has stated that obviousness
is tested by "what the combined teachings of the references would have suggested to
those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). But it "cannot be established by combining the
teachings of the prior art to produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp.,
732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And "teachings of
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