Ex Parte HARDING et al - Page 4


            Appeal No. 2001-2636                                                      
            Application No. 09/160,127                                                

            remote conversion machine (claim 47) or from a memory                     
            device of a controller for the conversion machine                         
            (claim 75), while claims 56 and 80, the only other                        
            independent claims on appeal, are limited to the storage of               
            machine information in a memory.  Machine information is                  
            expressly defined in appellants’ specification (see pages                 
            7-8) as being information related to the conversion machine               
            “such as a serial number, software revision number and                    
            date, physical site location, customer data and a                         
            conversion machine number or identifier.”  The appealed                   
            claims are therefore limited to this special definition of                
            machine information.  Note Lantech, Inc. v. Keip Machine                  
            Company, 32 F.3d 542, 547, 31 USPQ2d 1666, 1670 (Fed. Cir.                
            1994).                                                                    
                 The applied references do not teach or suggest the                   
            retrieval or storage of machine information as defined in                 
            appellants’ specification.  Furthermore, the examiner’s                   
            dismissal of the claim limitations pertaining to the                      
            machine information as being “a matter of design choice”                  
            (answer, page 6) is unconvincing especially in light of the               
            fact that the storage and retrieval of such machine                       
            information solve problems relating to the identification                 
            and other particulars pertaining to machines in the field.                
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