Appeal No. 1998-1927
Application No. 08/703,276
With regard to the first argued distinction, the examiner's position appears to be that the
inner surface of the spherically configured sensing coil 121 and reference coil 122 is concave
and, thus, inherently has a focal point associated therewith (answer, pages 5 and 7). The
appellants do not contest this assertion by the examiner, but urge that Fisher "fails to disclose or
teach detection restricted to energy on the concave surface originating at its focal point" (reply
brief, page 1).
It is well established that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982). Moreover, 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).
Having carefully reviewed the terminology of claim 1, we fail to perceive any limitation
that the detection performed by the sensing means be restricted to energy originating at the
focal point of the concave surface as the appellants' argument would suggest. The sensing coil
121 of the acoustic sensor disclosed in the Fisher patent, as we understand it, will detect any
3(...continued)
Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). In other words, there must be no difference between
the claimed invention and the reference disclosure, as viewed by a person of ordinary skill in the field of the
invention. Scripps Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576, 18 USPQ2d 1001, 1010 (Fed.
Cir. 1991). It is not necessary that the reference teach what the subject application teaches, but only that the claim
read on something disclosed in the reference, i.e., that all of the limitations in the claim be found in or fully met by
the reference. Kalman v. Kimberly Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984).
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