Appeal 2006-1127
Application 10/712,970
In reply, Appellants argue:
The orientation limitation is of significant
consequence in devices of the present invention
since it assists liquid flow while doing away with
the prior art pickup tubes and also with the check
valves at the bottom of the tubes. Norman teaches
a downwardly hanging cartridge having a pickup
tube that could not enable liquid flow on a gravity
feed basis. . . . However, in Norman the force of
gravity is something to be overcome and this is
done by the pickup tube 34 and a sufficient
"vacuum" in the valve 82. There is no teaching in
Norman that by placing the cartridge in a new
orientation, the force of gravity may be used to
help the operative function of the apparatus [Reply
Br. 4].
We are unpersuaded by Appellants’ argument. It is well settled that a
limitation of the specification must not be read into a claim where no express
statement of the limitation is included therein. Comack Comm., Inc. v.
Harris Corp., 156 F.3d 1182, 1186-87, 48 USPQ2d 1001, 1005 (Fed. Cir.
1998); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978); In re
Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551 (CCPA 1969). Appellants
argue that “[t]he claimed cartridge 12 is oriented to enable gravity assisted
flow of the first liquid from the cartridge” (Br. 8). However, the language of
the claim is devoid of structural or functional limitations consistent with
Appellants’ arguments. To read the claim as argued by Appellants would
impermissibly read a limitation into claim 1. LizardTech, Inc. v. Earth
Resource Mapping, Inc., 424 F.3d 1336, 1344, 76 USPQ2d 1724, 1731 (Fed.
Cir. 2006). Thus, we agree with the Examiner that the language of claim 1
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