Ex Parte LOBLEY et al - Page 5




              Appeal No. 2001-2055                                                                   Page 5                 
              Application No. 08/750,870                                                                                    


                     Sonberg et al. do disclose the features of: central host computer 14 that is                           
                     initially accessible by a call routing option entered by roamer via signaling                          
                     path without establishing a communications connection, and Home MTSO                                   
                     Site 10 controlled by central host computer 14 is to establish a                                       
                     communications connection with the caller only when the call routing                                   
                     option entered by the roamer is the code of *31, which is to activate                                  
                     transparent call forwarding.  See column 3, lines 10-58.                                               
              (Examiner's Answer at 6.)  The appellants argue, "[n]owhere in Sonberg do any of the                          
              service requests lead directly to the establishment of a voice or other communication                         
              connection, as part of the same transaction.  Sonberg merely describes an enabling                            
              transaction that allows subsequent (separate and independent) transactions to make                            
              voice calls."  (Reply Br. at 6.)                                                                              


                     "Analysis begins with a key legal question -- what is the invention claimed?                           
              Claim interpretation . . . will normally control the remainder of the decisional process."                    
              Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.                            
              Cir. 1987).  In answering the question, "the Board must give claims their broadest                            
              reasonable construction. . . ."  In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,                            
              1668 (Fed. Cir. 2000).  "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)).                                                                                                       









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