Appeal No. 2006-1589
Application No. 10/082,912
IV. Appellants argue that claimed portable networking device 130 does not include any
ability to monitor any activity or usage of the encoded purchased calling time – notably, the
portable networking device is not the device that will use the purchased calling time [brief, page
14].
A basic canon of claim construction is that one may not read a limitation into a claim
from the written description. Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243,
1248, 48 USPQ2d 1117, 1120 (Fed. Cir. 1998). Patentability is based upon the claims. “It is the
claims that measure the invention.” SRI Int’l v. Matsushita Elec. Corp. of America, 775 F.2d
1107, 1121, 227 USPQ 577, 585 (Fed. Cir. 1985) (en banc). When making a patentability
determination, the claimed invention must be compared to the prior art [emphasis added]. We
note that the negative limitations argued by appellants are not claimed. Accordingly, we find
that appellants are impermissibly reading negative limitations supported in the specification into
the claims to avoid the prior art.
V. Appellants argue that Kiel teaches away from the desirability of using a portable
networking device as an intermediary to an onboard system [brief, page 14, emphasis added].
We note that the Court of Appeals for the Federal Circuit has determined that teaching
away is irrelevant to anticipation. Seachange International, Inc. v. C-Cor, Inc., 413 F.3d 1361,
1380, 75 USPQ2d 1385, 1398 (Fed. Cir. 2005), citing Celeritas Tech., Ltd. v. Rockwell Int’l
Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522 (Fed. Cir. 1998); Bristol-Myers Squibb Co.
v. Ben Venue Labs., Inc., 246 F.3d 1368, 1378, 58 USPQ2d 1508, 1515 (Fed. Cir. 2001).
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