Appeal No. 2002-0313
Application No. 09/302,106
Before addressing the Examiner’s rejection based on prior
art, it is essential that we understand the claimed subject
matter and determine its scope. Accordingly, as required by our
reviewing court, we will initially direct our attention to
Appellants’ claim 1 in order to determine its scope. “[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). While claim
limitations should be interpreted as broadly as possible, the
limitation of “positioned directly between said host computer and
said assembly” should also be given its ordinary meaning
consistent with the specification without reading disclosed terms
into the claims, In re Etter, 756 F.2d 852, 858, 225 USPQ 1, 5
(Fed. Cir. 1985). Additionally, courts will give a claim term
the full range of its ordinary meaning as understood by persons
skilled in the relevant art, unless compelled otherwise. Texas
Digital Systems Inc. v. Telegenix Inc., 308 F.3d 1193, 1202, 64
USPQ2d 1812, 1818 (Fed. Cir. 2002). See also Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1342, 60 USPQ2d 1851, 1854 (Fed.
Cir. 2001). As our reviewing court has further stated, although
“the specification itself does not delimit the right to exclude,”
it should be relied upon to properly determine the meaning of
terms used in the claims. Markman v. Westview Instruments, Inc.,
5
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