Appeal No. 2006-1589
Application No. 10/082,912
The Court of Appeals for the Federal Circuit has determined that the words of the claim
must be given their plain meaning unless applicant has provided a clear definition in the
specification. In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). As
pointed out by the examiner [answer, page 5], the definition in the specification that corresponds
to the claimed portable networking device broadly discloses:
Portable networking device 130 may be, for example, a personal data assistant
(PDA), a cellular phone with memory capability, or any other appropriate device.
Portable networking device 130 may contain a wireless transceiver capable of
communicating both with Internet access device 120 and with an onboard system
contained in mobile vehicle 140 [specification, page 5, lines 16-20, emphasis
added].
We agree with the examiner that the supporting scope of the disclosed “any other
appropriate device” is sweepingly broad [specification, page 5, lines 17 and 18, emphasis
added]. While we agree with appellants that Kiel actually teaches that the activity monitoring
unit can be combined in an integral unit with the modem [see ¶0037], we find this issue moot
because nothing in the instant claims nor in the supporting definition argued by appellants
requires the reference to show a portable networking device having a wireless transceiver (i.e.,
modem) capable of communicating both with an Internet access device and with an onboard
system contained in a mobile vehicle [emphasis added]. We agree with the examiner that the
breadth of subject matter that the claim reads upon is significantly expanded by the use of the
qualifying term “may” in the supporting definition found within the specification [specification,
page 5, line 18]. Accordingly, we find that the sheer breadth of the supporting disclosure
strongly supports the examiner’s contention that Kiel's activity monitoring unit anticipates the
claimed “portable networking device” in the manner relied upon by the examiner.
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