Ex parte FUKUDA et al. - Page 4




          Appeal No. 1994-4024                                       Page 4           
          Application No. 07/759,865                           Paper No. 31           
               [the] extender, etc.[,] may be made to be plastic                      
               mounts according to the present invention.  Even in                    
               these cases, there are similar advantages.                             
               Appellant's response relies on the earlier finding that                
          there is no circumferential groove on the claimed lens mount                
          as sufficient to maintain the Board's construction (Paper                   
          No. 30 at 2-3).  Appellant further argues that placing the                  
          groove on the lens mount would be a less practical solution to              
          the problem the inventors faced.                                            
                                     DISCUSSION                                       
               The cited portion of Appellant's specification requires a              
          broader claim construction.  Not only does the passage                      
          disclose that the lens mount may be plastic, but it also                    
          provides that it be made "according to the present invention"               
          such that "there are similar advantages" (Paper No. 1 at 9:9-               
          11).  Generally, the claims of a patent are not limited to the              
          preferred embodiment, unless by their own language.  Karlin                 
          Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 973, 50               
          USPQ2d 1465, 1469 (Fed. Cir. 1999).  Thus, while a plastic                  
          camera mount with a circumferential groove is plainly the                   
          preferred embodiment, a plastic lens mount with the same                    
          groove is also disclosed.  Nothing in the language of the                   
          claim excludes a plastic lens mount made according to the                   







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