Ex parte MCCAIN et al. - Page 6




               Appeal No. 96-4063                                                                                                 
               Application 08/389,087                                                                                             


               1969).  It is improper to narrow the scope of the claim by implicitly reading in disclosed limitations from        

               the specification which have no express basis in the claims.  See In re Morris, supra; see also MPEP §             

               2111.                                                                                                              

                      Independent claims 55 and 69 on appeal are broadly directed to a portable handheld                          

               computing unit (17 in Figure 1 of the specification) which has a processor (31), a boot ROM (32), an               

               I/O ROM (34), at least one I/O port and a communication interface (40, 42, and/or 43), a RAM (33),                 

               a display (36) and display touch scanner (39), and an optical disk interface (40) (Figure 4).                      

                      We find that the broad language of independent claims 55 and 69 is met by the combination of                

               applied references to Robinson, Mitchell, and Rabinowitz.  We are in general agreement with the                    

               examiner (Answer, pages 4 to 6) that the collective teachings of Robinson, Mitchell, and Rabinowitz                

               would have taught or suggested all of the salient features of appellants’ portable handheld computing              

               unit recited in independent claims 55 and 69, and their corresponding dependent claims.                            

                      We note that although appellants’ arguments are presented in relation to a communications link              

               being of the wireless or "infrared" type, as disclosed in detail in the specification, independent claims 55       

               and 69 and their corresponding dependent claims 57 to 60, 62 to 68, 71 to 74, 76 to 83, and 85 to 88               

               merely call for a "communication interface."  See claim 55, line 6 and claim 69, line 6 on appeal.                 

               Robinson (pages 36, column 1, line 7) teaches a communication interface as does Mitchell (column 1,                

               lines 5 to 52).  We note that only claims 56, 61, 70, 75, and 84 on appeal specifically require that the           


                                                                6                                                                 





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007