Appeal No. 1998-2658 Page 14
Application No. 08/507,981
the rejection of claims 2, 3, 5, 6, and 12 under 35 U.S.C. §
103 is reversed.
Turning next to independent claim 7, we note that claim 7
does not recite writing the software to the medium. The claim
instead recites reading the software from the medium. Claim 7
additionally recites “second identification reading means for
reading a second identification from the medium if software 1
and the second identification information are written to the
medium.” The appellants present the same arguments regarding
claim 7 and they do for claim 1, with the exception that
“writing to” has been replaced with “reading from.” We find
that claim 7 is not met by the combined teachings of Orbach,
Itami, and IBM because the prior art does not suggest having
both the first and second identification information in the
1 We note that claim 7 utilizes the conditional term “if.” We have
construed the claim to require the clause “software . . . medium” to occur, as
the claimed comparing means could not compare the first identification
information with the second identification information, if no reading of the
second identification information occurs. Additionally, nor could the
software be read from the medium if the second identification information was
not read. As the metes and bounds of claim 7 can only be ascertained when the
conditional term “if” is construed as occurring, we find that this is the only
possible interpretation of the claim that is clear and definite within the
meaning of 35 U.S.C. § 112, second paragraph. As the examiner has not raised
the issue of 35 U.S.C. § 112, second paragraph, with regard to claim 7, we
decline to do so in view of our stated interpretation of the claim language.
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