Ex Parte HERBERT - Page 4




              Appeal No. 2002-0629                                                               Page 4                
              Application No. 08/236,378                                                                               


              adjacent pairs of tabs 23, 26, 33, 36 of the laminations (column 3, lines 1-8).  The                     
              clamps hold the stack tightly together so that the desired magnetic flux density can be                  
              produced and so that there is no noise produced by eddy currents and other effects                       
              acting on loose laminations and lamination pieces (column 2, lines 37-42).                               
                     Miller’s “magnetic core” is comprised of multiple parts or laminations stacked                    
              together.  While the term “solid” as used by appellant (specification, page 12) is                       
              sufficiently broad to encompass a stack of laminations, we understand appellant’s use                    
              of the term “solid” as requiring that any such laminations stacked together to form a                    
              core be “bonded rigidly together” as set forth on page 12 of appellant’s specification                   
              and as argued by appellant on page 18 of the brief.3  Even if Miller’s clamped stack of                  
              laminations were considered to be “bonded” rigidly together when clamped tightly                         
              together by the clamps 20, the steps of clamping the clamps 20 to the laminations                        
              would necessarily comprise part of the step of “obtaining at least one solid magnetic                    
              core” recited in claim 4.  Miller lacks any disclosure of then bonding the bottom and top                
              surfaces of the thus obtained solid magnetic core to base and top plates, respectively,                  
              as further called for in claim 4.                                                                        

                     3 It is axiomatic that, in proceedings before the PTO, claims in an application are to be given their
              broadest reasonable interpretation consistent with the specification, and that claim language should be  
              read in light of the specification as it would be interpreted by one of ordinary skill in the art.  In re Sneed,
              710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983).  Moreover, limitations are not to be read into  
              the claims from the specification.  In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.     
              Cir. 1993) citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989).  It is well settled,
              however, that it is entirely proper to use the specification to interpret what is meant by a word or phrase in
              a claim, and this is not to be confused with the improper addition of an extraneous limitation from the  
              specification wholly apart from any need to interpret the word or phrase.  In re Paulsen, 30 F.3d 1475,  
              1480, 31USPQ2d 1671, 1674 (Fed. Cir. 1994).                                                              






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