Appeal No. 2006-1221
Application No. 09/846,995
Limitations appearing in the specification, but not recited in the claim, are not read
into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369, 67 USPQ2d 1947,
1950 (Fed. Cir. 2003). Although the claims are interpreted in light of the specification,
limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d
1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993). Accordingly, we find that Appellants
are impermissibly reading limitations from the specification into the claims to avoid the prior
art.
II. Appellants argue that Maveddat does not teach, suggest, or imply that there is an
indication of potential reduced user terminal performance, as claimed, because Maveddat is
exclusively concerned with and directed to outages which are predictable [reply brief, page
4, brief page 5].
The examiner responds that an outage is a reduced performance situation because the
terminal’s performance is reduced to not working at all [answer, page 9].
We agree with the examiner that an outage is a reduced performance situation.
Maveddat teaches that the SMS message transmitted to mobile subscriber 106 via processing
system 118 is generated by intelligent peripheral 116 that “determines when the event will
occur using an automatic forecasting algorithm” [col. 8, lines 38-53]. Maveddat explicitly
discloses: “The SMS message then indicates that an outage event will occur at a certain point
in time” [col. 8, line 52]. We find that the broad language of the claim (i.e., informing a user
of a potential for reduced user terminal performance) clearly reads upon Maveddat’s
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