Appeal No. 2005-1632
Application No. 10/448,194
in fact, cannot -- read disclosed limitations into any claim before us in an attempt to
distinguish the claim over the prior art. The claims measure the invention. SRI Int’l v.
Matsushita Elec. Corp., 775 F.2d 1107, 1121, 227 USPQ 577, 585 (Fed. Cir. 1985) (en
banc). During prosecution before the USPTO, claims are to be given their broadest
reasonable interpretation, 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).
Appellant’s remarks in nominal support of the separate patentability of claim 69
(Brief at 30) fail to call the examiner’s findings into question and demonstrate why, even
were the remarks considered arguments for separate patentability of the claim, there
would be no reason to reproduce the examiner’s findings and discuss the support for
each in the reference. Appellant submits that Deaton fails to include a printer that can
print an incentive offer as claimed, while seeming to ignore both the rejection and the
reference (beyond its name). We would refer, for example, to coupon dispenser 123b
(Fig. 2A) of Deaton and column 12, lines 28 through 35. We would refer, for example,
to column 78, lines 40 through 50. We might reproduce, for example: “A third technique
of distributing coupons utilizes a system to actually print, at the point-of-sale, coupons
bearing the desired information based upon selected criteria.” Deaton col. 69, ll. 16-18.
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