Ex parte CHEN et al. - Page 9

                 Appeal No. 1997-2898                                                                                                                   
                 Application 08/368,239                                                                                                                 

                          We note that Appellants' claim 1 recites "means for                                                                           
                 selecting a first plane based on a first aspect of the three                                                                           
                 dimensional drawing."  The claim does not recite any explicit                                                                          
                 activity by the CAD system for selecting a plane.  Rather,                                                                             
                 relying on the Appellants' specification, beginning on page                                                                            
                 12, selection steps are performed by the user.   Thus, the                         3                                                   
                 claimed means for selecting a first plane is merely the device                                                                         
                 allowing the user to make a selection as to what plane will be                                                                         
                 considered the first plane.                                                                                                            
                          The Examiner had stated in an Office Action that                                                                              
                 Himelstein implicitly teaches storage and selection of planes.                                                                         
                 The Appellants argued on page 9 of the brief that it is                                                                                
                 improper to infer the existence of claim limitations.  We                                                                              
                 agree that the Examiner’s language is not artful, but it is                                                                            
                 clear that the Examiner intended to argue that the limitation                                                                          
                 is inherent within the teachings of the reference.                                                                                     

                          3We note that Appellants do not argue that the claim is                                                                       
                 to be interpreted by looking to the specification for the                                                                              
                 corresponding structure, material, or acts described therein,                                                                          
                 and equivalents thereof, to the extent that the specification                                                                          
                 provides such disclosure.                                                                                                              

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