Ex Parte HEMMINGER et al - Page 8




                 Appeal No. 2001-1866                                                                                  Page 8                     
                 Application No. 08/478,606                                                                                                       


                         Here, the appellants added claims 16-24 to their specification by an amendment.                                          
                 (Paper No. 8.)  Independent claim 16 specifies in pertinent part the following limitations:                                      
                 "said electronic energy meter comprises a communications interface and one optical                                               
                 test interface. . . ."  In summary, the independent claim requires two, distinct elements,                                       
                 viz., (1) a communications interface and (2) an optical test interface.  Dependent                                               
                 claim 22 further specifies that "the communications interface is an optical                                                      
                 communications port;" dependent claim 24 further specifies that "the test interface is an                                        
                 LED."  We are not persuaded that these limitations can be interpreted such that a light-                                         
                 emitting-diode ("LED")  of the optical communications port also serves as the optical                                            
                 test interface.  To the contrary, the limitations, in combination, require an LED separate                                       
                 from an optical port.                                                                                                            


                         It is uncontested that the original specification, which includes the original claims,                                   
                 fails to disclose an LED separate from an optical port.  To the contrary, although the                                           
                 specification acknowledges that "[t]raditionally, electronic meters have provided a single                                       
                 light emitting diode (LED) in addition to an optical port," (Spec. at 16-17), it teaches                                         
                 away from having both an optical port and one or more separate test LEDs.                                                        
                 Specifically, "[s]uch designs add cost, decrease reliability and limit test capabilities."                                       
                 (Id. at 17.)  Instead of having both an optical port and one or more separate test LEDs,                                         
                 the specification discloses that the appellants' "invention overcomes these limitations by                                       








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