Appeal No. 2006-1589
Application No. 10/082,912
into the claim can be a difficult one to apply in practice. Phillips v. AWH Corp., 415 F.3d 1303,
1323, 75 USPQ2d 1321, 1334 (Fed. Cir. 2005) (en banc), citing Comark Communications, Inc.
v. Harris Corp., 156 F.3d 1182, 1186-87, 48 USPQ2d 1001, 1005 (Fed. Cir. 1998) (“there is
sometimes a fine line between reading a claim in light of the specification, and reading a
limitation into the claim from the specification”). In Phillips, the court noted: “However, the line
between construing terms and importing limitations can be discerned with reasonable certainty
and predictability if the court's focus remains on understanding how a person of ordinary skill in
the art would understand the claim terms” [emphasis added]. Phillips, 415 F.3d at 1323, 75
USPQ2d at 1334.
We note that it is the job of the examiner, as the finder of fact, to determine how a person
of ordinary skill in the art would understand the claim terms at the time of the invention. After
carefully considering all the evidence before us, we agree with the examiner that appellants’
interpretation of the claimed “onboard system” impermissibly reads limitations from the
specification into the claims. We note that the claim term “onboard” is a relative term subject to
a broad reasonable interpretation that generally specifies a physical relationship or proximity
between two or more objects or entities. This broad, but reasonable, construction is entirely
consistent with the disclosure in the instant specification of an “onboard system contained in
mobile vehicle 140” [specification, page 5, line 20]. Furthermore, we agree with the examiner
that a person of ordinary skill in the art would understand the disputed term “onboard system” as
having a broader scope than the meaning appellants attempt to impute by argument. We
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