Appeal 2006-1207
Application 10/354,491
The Examiner responds:
[T]he heating [in Wilhelm] only occurs in the
region where the coating is present. Thus, heating
terminates at the boundary between the coated and
uncoated regions of the pipe. As currently drafted,
the claim requires ”preheating at the cut-back
portion”. The above noted heating step would heat
the cutback portion at the above noted boundary-
the claim fails to require that the entire curt-back
[sic, cut-back] portion is heated” [Answer 9].
In reply, Appellant counters, “neither the claims nor Appellant's
Specification support the reading of ‘preheating at the cut-back portion’
relied upon by the Examiner” (Reply Br. 4). Specifically, Appellant argues
that, while “[t]he claim language may not require preheating of the entire
exposed portion of the core as noted by the Examiner, however, it certainly
requires heating more than just a boundary between the core and composite
reinforcement” in view of the language of claim 14 and the Specification
(Reply Br. para. bridging 4 and 5).
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 Communications, 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).
We first note that Appellant concedes that “[t]he claim language may
not require preheating of the entire exposed portion of the core as noted by
the Examiner” (Reply Br. 4). In addition, as also noted by the Examiner,
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007