Appeal No. 2001-0517
Application No. 08/586,611
Before we enter into the analysis of the claim, it is
imperative that the claim is interpreted properly. The claim
interpretation is the starting point for any claim analysis as
stated by the Federal Circuit. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998). Claims will be given their broadest
reasonable interpretation consistent with the specification, and
limitations appearing in the specification are not to be read
into the claims. In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5
(Fed. Cir. 1985).
In this case, the examiner asserts (answer at pages 5-13)
that the claims do not require the dynamic benchmarking which
appellants argue in the brief. Specifically, the examiner
contends (id. at pages 5 and 6) that “it is noted that the
features upon which appellants rely (i.e., dynamic benchmarking
on an actual implementation in a system, new paradigm) are not
recited in the rejected claim(s).” Again, the examiner contends
regarding claim 8 (id. at page 8) that:
It should also be noted that claim 8 simply states a
function to determine an optimal transfer block size
for a hard drive by benchmarking accesses to the hard
drive for a plurality of benchmarking transfer block
sizes in accordance with a set of bench marking
parameters, but never states any requirement for a
circuit board endowed with a function for dynamic
determining.
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