Appeal No. 1999-2233
Application No. 08/794,691
rejection of claims 10 through 20.
Turning first, as we must, to the 35 U.S.C. § 102(b)
rejection of claim 1, appellants argue (brief, page 7) that
“the Examiner should give the specification, the
illustrations, the Tables, and the Appendix considerable
weight in interpreting how Claim 1 distinguishes over the
Walls patent.” The claims on appeal should be read in light
of appellants’ disclosure; however, reading a claim in light
of the disclosure to interpret broadly worded limitations
explicitly recited in the claim is a quite different thing
from reading limitations of the specification into a claim to
thereby narrow the scope of the claim by implicitly adding
disclosed limitations which have no express basis in the
claim. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541,
550-51 (CCPA 1969). In other words, the broadly worded
limitations of claim 1 on appeal do not encompass “‘efr’
data,” “data structure” or “metadata” (brief, pages 7 and 8).
When the limitations of claim 1 are given their broadest
reasonable interpretation (brief, pages 7 and 8), we agree
with the examiner (answer, page 6) that in Walls:
[W]hen a digital data processing system determines
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