Appeal No. 2005-1037
Application No. 09/904,269
Claims cannot be read in a vacuum, but must be read in light of the specification
to thereby interpret limitations explicitly recited in the claim. In re Prater, 415 F.2d 1393,
162 U.S.P.Q. 541 (CCPA 1969). However, this is a different thing from reading
limitations of the specification into a claim, to thereby narrow the scope of a claim by
implicitly adding disclosed limitations having no express basis in the claim. Id.
In this case, limiting the scope of the term “processing” to the embodiment
described in the specification, would be reading limitations of the specification into the
claim.
The claim language “processing said sheet” is broad enough to define the step of
applying adhesive on one sheet. Baker, col. 3, lines 8-9.
After the adhesive is applied, the other sheet is lowered and the two sheets are
combined. Baker, col. 3, lines 9-19. In our view, applying an adhesive to a sheet on a
vacuum chuck and then combining the sheet with a second sheet on a vacuum chuck is
“temporarily flattening the sheet” and “processing said sheet.”
The appellant has not argued the third element of claim 1 separately.
Accordingly, we hold that Baker teaches each and every element of claim 1.
Although the rejection is based on Baker in view of Wu, it is permissible to affirm
the rejection in light of Baker alone. In re Bush, 296 F.2d 491, 131 U.S.P.Q. 263 (CCPA
1961).
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