Appeal No. 2002-1306
Application No. 08/993,321
are not based on limitations appearing in the claims. In re Self, 671 F.2d 1344, 1348,
213 USPQ2d 1, 5 (CCPA 1982). Thus, it is immaterial that Katzela may be directed to
a wireless only communications network while the instant invention is contemplated to
be directed to both wireless and fixed networks because appellants’ claims are not
limited to the latter.
Appellants do point to the claim language “a subset of the certain number of
switches are provided with functions supporting wireless terminals” as support for the
argument that the claims are directed to both wireless and fixed networks. However, to
the extent this is implying that since only a “subset” of the switches is for supporting
wireless terminals, this must mean that the remainder of the switches support a fixed
terminal, we are not persuaded. There is no such implication made by the claim
language because a “subset” may, indeed, cover the entire set. It is basic set theory
that the whole of a set is also a subset of that set, i.e., the universal set. Accordingly,
the instant claim language regarding a “subset” does not preclude all of the switches
from being provided with functions supporting wireless terminals.
In the reply brief, appellants argue that the advantage of the instant invention,
viz., including both wireless and fixed networks, must be taken into account in
determining obviousness, even though the limitation does not appear in the claims,
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007