Appeal No. 2001-1866 Page 7
Application No. 08/478,606
kilowatt demand as different "parameters to be measured. . . ." Col. 6, l. 24 (emphasis
added), and as different "values measured. . . ." Id. at l. 27 (emphasis added). Having
found that teachings from Johnston itself would have suggested at least two
measurements of power to a person of ordinary skill in the art, we maintain our
affirmance of the obviousness rejection of claim 3 and of claims 4-15 and 25-38, which
fall therewith.
Rejections of Claims 16-24 under 35 U.S.C. § 112, ¶¶ 1 and 2
Rather than reiterate the positions of the Board or appellants in toto, we address
the latter's two points of contention. First, they "submit that nothing prevents claims 16,
22, and 24 from reading on a structure, such as that described in this portion of the
specification, where the transmit LED of the optical port is in effect borrowed to provide
the test interface function." (Req. Reh'g at 7.)
"'[T]he main purpose of the examination, to which every application is subjected,
is to try to make sure that what each claim defines is patentable. [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) (quoting Giles S. Rich, The Extent of the Protection and
Interpretation of Claims --American Perspectives, 21 Int'l Rev. Indus. Prop. & Copyright
L. 497, 499, 501 (1990)).
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