Appeal No. 2004-0267
Application 09/847,224
"[w]hat is forming the pattern" (FR2), we note that a method
claim, such as claim 1, does not need to describe the structure
for performing the method step; the apparatus claims, such as
claim 65, recite a computing device. Accordingly, the rejection
of claims 1-75 on this ground is reversed. Nevertheless,
"pattern" is not interpreted to be limited to a "search pattern"
for the purposes of defining over the prior art. Before the
application is granted, there is no reason to read into the claim
the limitations of the specification. See In re Zletz,
893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). We
only conclude that the term "pattern" is not indefinite.
The examiner considers claims 2, 19, and 51 to be indefinite
since they claim "assuming a value" yet are dependent from claims
in which that value is "ascertained." The examiner states (FR2):
"Ascertained or ascertaining implies determining a fact, not
making an assumption. Therefore, the claims are contradictory."
"Ascertain" is defined as "to find out or learn with
certainty." Webster's New Collegiate Dictionary (G.&C. Merriam
Co. 1977). "Assume" is defined as "to take as granted or true :
SUPPOSE." Id. We construe "assuming" to be one form of
"ascertaining." Accordingly, the rejection of claims 2, 19,
and 51 on this ground is reversed.
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