Ex parte BANERJEE et al. - Page 10




                 Appeal No. 1998-0943                                                                                                                   
                 Application No. 08/300,500                                                                                                             


                 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 contend that McCain does not disclose the provision                                                                         
                 of a response to a user’s positional input “prior to receiving                                                                         
                 subsequently image modification generated by the application                                                                           
                 program running on the host computer.”  In our view, even                                                                              
                 assuming, arguendo, that such response sequence language would                                                                         
                 distinguish over McCain, no such language exists in the                                                                                
                 claims.  In view of the above, since all of the limitations of                                                                         
                 independent claims 6 and 11 are disclosed by McCain, the                                                                               
                 Examiner’s 35 U.S.C.  102(e) rejection of claims 6 and 11 is                                                                          
                 sustained.        4                                                                                                                    
                          Dependent claims 7 and 9 have not been separately argued                                                                      
                 by  Appellants.  Accordingly, these claims will be treated as                                                                          
                 falling with their parent claim 6.  See In re Young, 927 F.2d                                                                          
                 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991); In re                                                                                 


                          4The recitations “said host computer” at line 6 of claim                                                                      
                 11 and “said positional and selection data” at line 3 of claim                                                                         
                 13 lack clear antecedent reference.                                                                                                    
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