As the movant, Lee must show that the proposed claims define the same patentable
invention as another claim whose designation as corresponding to the count the moving party
does not dispute. 37 CFR § 1.637(3)(ii). Lee has sufficiently demonstrated that van Engelen
claims 4, 7 and 10 define the same patentable invention as van Engelen claims 3, 6 and 9 in view
of Schutten', without the teachings of Lee '820.
In its opposition, van Engelen argues that since van Engelen claims 3, 6 and 9 require that
the reference frame and the machine frame be dynamically isolated (i.e., isolated with dynamic
isolators in between the two frames), and that the force actuator system of claims 4, 7 and 10 is
defined in van Engelen's specification as being integrated with the dynamic isolators, then the
compensation force recited in claims 4, 7 and 10 must be between the two frames and exerted on
the reference frame (opposition at 14).
Van Engelen's claim interpretation is erroneous. Van Engelen necessarily reads
limitations into its claims 4, 7 and 10 that are not present. Note, that none of van Engelen claims
4, 7, or 10 provides any relationship between the function of "dynamically isolated" frames and
the force actuator system. Furthermore, as discussed in connection with van Engelen preliminary
motion 5, one frame that is "dynamically isolated" from another frame does not mean that there
are necessarily dynamic isolators in between the two frames. Van Engelen's independent claims
I and 5 recite a relationship between the two frames, but do not recite any particular structure
associated with that relationship. Even if we were to interpret van Engelen claims I and 5 to
require dynamic isolators in between the two frames, it does not necessarily follow that the force
actuator system also be in between the two frames. Claims 4, 7 and 10 recite a force actuator
system which exerts a compensation force on the reference frame, Absent from the claims is a
requirement that the force actuator system be in between the claimed reference frame and the
5 U.S. Patent 4,821,205, granted 11 April 1989 (Ex. 1091).
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