Appeal No. 2004-2368
Application No. 09/395,854 Page 8
court in In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998) "[t]he name of the game is the claim."
Claims will be given their broadest reasonable interpretation
consistent with the specification, and limitations appearing in
the specification are not to be read into the claims. In re
Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985).
We find that the claim sets forth that the integrated
circuit being tested has a first stage and a second stage. The
claim additionally recites that upon the testing detecting a
defect, retesting the integrated circuit while bypassing the
first stage. We find that the language of the claim does not
recite that at least a portion of the first stage is bypassed.
We find nothing in the claim that would indicate to an artisan
that bypassing a portion of a first stage meets the claimed
bypassing of the first stage. In order to meet the claimed
"bypassing the first stage" it is necessary that the reference
explicitly or inherently bypass the first stage in its entirety.
Because the examiner considers bypassing at least a portion of
the first stage to meet the claimed "bypassing the first stage"
we find the examiner's interpretation of the claim to be faulty.
Turning to the disclosure of Lindberg, it would appear to us
that figure 5 discloses 16 stages, one for each latch. However,
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