Appeal No. 2003-0494
Application No. 09/176,012
We first consider the rejection of claims 15, 16 and 20 under 35 U.S.C. § 102 as
being unpatentable over Honda. Appellants’ arguments directed to the claims in group
A, claims 15 and 20, are on pages 10 through 14 of the brief. Appellants argue on page
11 of the brief that claim 15 differs from the teaching of Honda in that claim 15 includes
the limitation of a query profile and that:
the important point being that the query profile does not contain the data to be
stored, but only a profile of a query to be performed on data existing on the
information provider’s system. The distinction also appears in the language of
claim 15 itself. The query profile is described as containing “at least one
information requirement”- an information requirement is different from the
information itself.
While we recognize that the invention disclosed in the appellants’ specification is
different then the teaching of Honda, it is the claims, which are subject to the rejection.
Therefore, before we consider the relevant teachings of the prior art, we must first
determine the scope of the claims. Claims will be given their broadest reasonable
interpretation consistent with the specification, limitations appearing in the specification
will not be read into the claims. In re Etter 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed.
Cir. 1985). In analyzing the scope of the claim, office personnel must rely on the
appellants’ disclosure to properly determine the meaning of the terms used in the
claims. Markman v. Westview Instruments, 52 F3d 967, 980, 34 USPQ2d 1321,
1330 (1996). “[I]nterpreting what is meant by a word in a claim ‘is not to be confused
with adding an extraneous limitation appearing in the specification, which is improper.’”
(emphasis original) In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64
USPQ2d 1202, 1205, (Fed. Cir. 2002) (citing Intervet America Inc v. Kee-Vet
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