Appeal No. 2002-1306
Application No. 08/993,321
because weight must be given to all evidence bearing on the issue of obviousness. We
disagree. While it is true that weight must be given to all evidence bearing on the issue
of obviousness, this refers to the obviousness of the “claimed subject matter.” The
inclusion of both wireless and fixed networks, for the reasons supra, forms no part of
the instant claimed subject matter.
At page 2 of the reply brief, appellants argue that
...in assessing the obviousness of an invention, factors such as
what the invention does, the manner in which it is done, and the
advantages over prior methods, should all form part of the inquiry.
The advantages are part and parcel of the invention. If the advantages
flow from what is being claimed, the advantages must be considered.
Advantages need not be specifically set forth in the claims.
We note that appellants cite no authority for this position and we are unaware of
any rule of law which requires us to read limitations from the specification into the
claims except in the case of proper “means plus function” claim language in
accordance with 35 U.S.C. § 112, sixth paragraph. The instant claims are not in
“means plus function” format. While certain unclaimed advantages may accrue from
the claimed subject matter, there is simply nothing within the language of the instant
claims indicating that tree topologies in an ATM network are formed using “both
wireless and fixed terminals.” In fact, only wireless terminals are indicated in the
claims. Nothing therein indicates that there are any fixed terminals.
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