Ex Parte TURNER et al - Page 6




          Appeal No. 2000-1961                                                        
          Application 08/840,200                                                      

               Claim 16 does not recite anything about the baseline data              
          set "evolving" or changing over time, as argued.  The term                  
          "time-based" in the phrase "time-based baseline data set," can              
          mean many things and only broadly requires that the baseline data           
          is somehow determined based on time, such as gathering baseline             
          data over a period of time.  It is improper to narrow the scope             
          of the claim by implicitly reading in disclosed limitations from            
          the specification which have no express basis in the claims.  See           
          In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969);           
          In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978)                  
          (inferential limitations are not to be read into the claims);               
          In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982) ("Many           
          of appellant's arguments fail from the outset because . . . they            
          are not based on limitations appearing in the claims.").                    
          Appellants have not explained why "time-based baseline data set"            
          should be interpreted to require a continuously refined baseline            
          data set.  We note that appellants know how to claim such a                 
          meaning if it was intended, as evidenced by claims 19 and 20.               
          Baseline data in claim 16 can be measured "on-line" as the system           
          works at a first time and then operating characteristics can be             
          measured "on-line" and compared to these fixed baseline data;               
          claim 16 does not require the baseline data and the operating               
          characteristics to be determined "on-line" at the same time.                


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