Appeal No. 2006-1589
Application No. 10/082,912
Accordingly, we find Appellants’ argument that Kiel teaches away is misplaced because the
examiner has rejected the claims under 35 U.S.C. §102.
VI. Appellants argue that Kiel does not disclose an onboard system, as claimed [brief, page
14].
In response, the examiner asserts that appellants’ interpretation of the claimed “onboard
system” corresponds to an onboard system contained in a mobile vehicle, and that such
interpretation impermissibly reads limitations from the specification into the claims [answer,
page 5, emphasis added]. The examiner further contends that the client communication device
can be contained in a mobile vehicle because it is well known to equip mobile vehicles with
communication devices such as car phones [answer, page 5].
“During patent examination, the pending claims must be given their broadest reasonable
interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d
1664, 1667 (Fed. Cir. 2000). The broadest reasonable interpretation of the claims must also be
consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165
F.3d 1353, 1358, 49 USPQ2d 1464, 1467 (Fed. Cir. 1999). 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). The Court of
Appeals for the Federal Circuit has recognized that the distinction between using the
specification to interpret the meaning of a claim and importing limitations from the specification
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