Appeal No. 1996-3814 Page 13
Application No. 08/348,835
Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121, 227 USPQ
577, 585 (Fed. Cir. 1985)
If everything in the specification were required to
be read into the claims, or if structural claims
were to be limited to devices operated precisely as
a specification-described embodiment is operated,
there would be no need for claims. Nor could an
applicant,
regardless of the prior art, claim more broadly than
that embodiment. Nor would a basis remain for the
statutory necessity that an applicant conclude his
specification with “claims particularly pointing out
and distinctly claiming the subject matter which the
applicant regards as his invention.” 35 U.S.C. §
112. It is the claims that measure the invention.
Aro Mfg. Co., Inc. v. Convertible Top Replacement
Co., Inc., 365 U.S. 336, 339, 81 S.Ct. 599, 600-01,
5 L.Ed.2d 592, 128 USPQ 354, 356-57 (1961); Bandag,
Inc. v. Al Bolser’s Tire Stores, Inc., 750 F.2d 903,
922, 223 USPQ 982, 996 (Fed. Cir. 1984); Jones v.
Hardy, 727 F.2d 1524, 1528, 220 USPQ 1021, 1022
(Fed. Cir. 1984)[footnote deleted].
Here, the majority states that they understand the method
of detection described in claim 2 based on the teachings of
the specification. To that end, the majority points generally
to numerous figures and pages (Figures 8-14 and pages 11-18)
in the specification, as well as to page 2, lines 23-27,
specifically. With respect to the former, I agree with the
majority that the specification teaches “a substrate that is
formed with grooves arranged in predetermined patterns and
which grooves are filled with a magnetized magnetic
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