Appeal No. 2000-2188 Page 8
Application No. 09/063,050
necessary findings related to the functions specified in claim 1,
i.e., receiving an externally applied clock signal, and chose a
different function (brief, page 9). Additionally, Appellants
point out that although claim 4 does not fall under paragraph 6
of § 112, its functional limitations cannot be ignored (brief,
page 10).
In response to Appellants’ arguments, the Examiner asserts
that the signal OSC is an external signal with respect to the
voltage generator since the signal is produced independent of the
voltage generator (answer, page 6). The Examiner further reasons
that although the oscillator and the voltage generator may be
formed on a single chip, the signal OSC comes from “somewhere”
external with respect to the voltage generator circuit and is
externally applied to the pump controller (answer, page 6).
Before addressing the Examiner’s rejection based upon prior
art, it is essential that we understand the claimed subject
matter and determine its scope. Claim interpretation must begin
with the language of the claim itself. See Smithkline
Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878,
882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988). Accordingly, as
required by our reviewing court, we will initially direct our
attention to Appellants’ claim 1 in order to determine its scope.
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