Ex Parte BACHA et al - Page 5




              Appeal No. 2003-1225                                                                                         
              Application No. 09/223,765                                                                                   

                     Apparently, “vsSupervisor” has some secret meaning to appellants that is                              
              somehow believed to distinguish over the Carroll reference.  The word appears to have                        
              no recognized meaning in the art.  Appellants’ disclosure does not set forth any                             
              particular definition for the word.  Instead, the disclosure (e.g., page 12 as originally                    
              filed) uses the term in the description of the preferred embodiment.  We conclude that                       
              the “vsSupervisor” functions merely relate to arbitrary names denoting the functions.                        
                     The actual requirements of the claims thus are limited to what the functions do,                      
              as those functions are set forth in the claims, rather than how those functions are                          
              named.  Our reading of unclaimed features relating to the “vsSupervisor” functions into                      
              the claims would be, simply, the prohibited exercise of reading disclosed limitations into                   
              the claims.  Claims are to be given their broadest reasonable interpretation during                          
              prosecution, and the scope of a claim cannot be narrowed by reading disclosed                                
              limitations into the claim.  See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,                          
              1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir.                       
              1989); In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550 (CCPA 1969).                                  
                     Appellants suggest that the rejection does not comport with the principles of                         
              “inherency.”  However, under a proper interpretation of the instant claims, one does not                     
              arrive at a consideration of potential “inherency.”  Appellants have not shown that the                      
              rejection is deficient in showing any aspect of instant claim 1, other than the literal term                 
              that appears to have been coined by appellants.  Since we conclude that Carroll                              
              describes what is claimed, we sustain the Section 102 rejection of claim 1.                                  
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