Appeal No. 2006-1900
Application No. 10/163,946
Beginning at the bottom of page 4 of the principal brief on appeal, appellant
presents arguments only as to the language in the preamble characterizing the claimed
invention as a portable scanner and the claimed at least one position detector in the body
of the claim. We observe here that appellant has already indicated that the subject matter
argued before us here is known in the art based on the discussion in the Background of
the Invention at specification pages 1 through 5. Indeed, appellant’s contribution in the
art utilizing first and second aperture sizes according to the Summary of the Invention at
page 6 of the specification as filed is not argued before us as to independent claim 1 on
appeal.
Initially, appellant argues that the language of the preamble of claim 1 on appeal
“[a] portable scanner for document imaging” is not met by the teachings of the camera in
Mikoshiba. The language “for” indicates an end use limitation for imaging a document.
Appellant’s urging that the term “portable scanner” is defined at the bottom of
specification page 1 at lines 17-19 is misplaced. This characterization at this location is
not stated to be a definition, and all the elements recited from pages 1 through 5
comprising a well known portable scanner in the prior art are not recited in the body of
independent claim 1 on appeal. Appellant is, in effect, inviting us to read the
specification into the subject matter of claim 1 on appeal.
Indeed, we fully agree with the examiner’s use of Mikoshiba’s camera as
anticipatory of the subject matter of representative independent claim 1 on appeal.
Appellant’s indication that a hand-held or portable scanner is an optical scanner which is
designed to be moved by hand across an object or document being scanned is not in any
manner or scope recited in claim 1 on appeal. In fact, it is the user who does the scanning
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