Appeal No. 2002-1697 Page 5
Application No. 09/023,039
Cir. 1987). In answering the question, "the Board must give claims their broadest
reasonable construction. . . ." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664,
1668 (Fed. Cir. 2000). "Moreover, limitations are not to be read into the claims from the
specification." In re Van Geuns, 988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed.
Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.
1989)).
Here, independent claim 13 recites in pertinent part the following limitations:
"providing to an individual compliance information on a first computer; prompting the
individual with the first computer to consent to subsequent computer-aided delivery of
additional compliance information; and communicating the individual's consent from the
first computer to a second computer." Independent claims 1 and 21 include similar
limitations. Although we agree with the examiner's premise that the claimed
"'compliance information' constitutes non-functional descriptive data," (Examiner's
Answer at 11), we disagree with his conclusion it "therefore, bears no patentable
weight." (Id.) To the contrary, "every limitation positively recited in a claim must be
given effect in order to determine what subject matter that claim defines." In re Wilder,
429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970). "All words in a claim must be
considered in judging the patentability of that claim against the prior art." In re Wilson,
1424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Giving the independent
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