Appeal No. 1999-2226 Page 7
Application No. 08/582,678
address the issue of whether the here claimed “securing” is intended to be permanent or
temporary. In any event, it is appropriate to here emphasize that it has been decided that it is an
error for this Board to add “inferential limitations” to applicant’s claims. See In re Priest, 582
F.2d 33, 37-38, 199 USPQ 11, 15 (CCPA 1978).
Thus, the independent claims on appeal do not recite that the modules are permanently
secured to the frame, and it would be improper to read any such limitation into these claims.
Likewise, Appellant’s arguments that modules and templates have functions “completely
different” from one another (see pages 3-4 of reply brief) are not in any way reflected by the
claim language. The claim does not recite any function for the modules. Accordingly, it would
be improper to read the function of “each ‘module’ stores a single chip”(reply brief, page 4) into
the claim.
Furthermore, it has been established that it is appropriate to reject a chemical process
claim that recites no steps not disclosed in a prior patent, even if a new product may be obtained,
since it must be due to some step not included in the claim. See In re Sussman, 141 F.2d 267,
270, 60 USPQ 538, 541 (CCPA 1944).
The here claimed process likewise recites no steps not disclosed in a prior patent, that is,
Murphy. Although Appellant argues he fabricates a pack tray different from Murphy’s, we can
not find any claim language supporting this argument. If Appellant does ultimately fabricate a
different pack tray from Murphy’s, it must be due to some step not included in claim 1.
With respect to claim 21, its language is substantially the same as claim 1. However,
claim 21 calls for the additional step of “placing said plurality of modules in said master frame.”
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