Appeal No. 2001-2579 Page 7
Application No. 08/885,996
"[T]he 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)).
Here, claim 1 specifies in pertinent part "confirming a data processing form of
said printer. . . ." Despite the appellant's argument, the data processing form of the
claim is not limited to a byte form, a word form, or a long word form. Had the appellant
intended to limit the scope of the claim so, he could have recited expressly these
specific forms as he did in claims 3 and 7. The appellant chose not to do so, seeking a
broader claim. We will not read the omitted limitations into claim 1 to narrow it. If the
appellant chooses to have these limitations included, he can amend the claim "during
the examination of [their] patent application. . . ." In re Prater, 415 F.2d 1393, 1404-05,
162 USPQ 541, 550-551 (CCPA 1969).
In addition, the doctrine of claim differentiation supports an interpretation of "a
data processing form of said printer" that is not limited to the specification's byte form,
word form, or long word form. "This doctrine, which is ultimately based on the common
sense notion that different words or phrases used in separate claims are presumed to
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007