Appeal No.2003-1091
Application No. 09/484,248
the arguments of record, we are in agreement with the Examiner’s
position as stated in the Answer. Our review of the arguments of
record reveals that Appellant and the Examiner are in general
agreement as to the operation of the device of Butcher, i.e.,
each value shift of shift register 11 adds or removes a delay
element. We also do not disagree with Appellant that the
operation of Butcher differs from that disclosed by Appellant in
which the change of a single bit in a clock line pattern results
the selection or removal of plural delay elements in a delay
line. It is the claimed invention, however, which is at issue
before us, and we find that Appellant’s arguments are not
commensurate with the scope of the actual language of claim 1.
In contrast to Appellant’s arguments that claim 1 requires the
single step selection of a plurality of delay elements, the
actual language of claim 1 recites the selection of “ . . . up to
a plurality of delay elements . . . .” In our view, this claim
language clearly encompasses the selection in a single step of a
single delay element, a feature which even Appellant has
recognized is disclosed by Butcher. Appellant’s arguments
improperly attempt to narrow the scope of the claim by implicitly
adding disclosed limitations which have no basis in the claim.
See In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28
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