Appeal No. 2006-1934
Application No. 09/798,833
In the reply brief appellants argue that the examiner has “failed to show that
Lazarus teaches a determination of a historical customer value, that is the actual value of
the customer (e.g. dollars spent) to a particular business entity.” Further, appellants
argue that the examiner has not shown how Lazarus teaches a determination of an
intrinsic customer value. Appellants’ state: “[i]n simplistic terms, the claimed invention
compares one actual customer specific value (the HCV) with another customer-
specific estimated value (the ICV), while Lazarus teaches the comparison of a
predicted customer value with a predicted market segment value.”
We concur with the rationale applied by the examiner in determining the scope of
claim 1 and with the examiner’s findings of fact regarding the Lazarus reference.
Appellants’ arguments have not convinced us of error in the examiner’s rejection.
Initially, we note that we do not find a limitation in claim 1 that limits the method to one
which “provides information about a customer's potential to change behavior with respect
to a particular merchant” as asserted by appellants. Nor, as discussed infra, do we find
that such a limitation is implied by the terms Historical Customer Value or Intrinsic
Customer Value.
Claims will be given their broadest reasonable interpretation consistent with the
specification, and limitations appearing in the specification will not be read into the
claims. In re Etter 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed. Cir. 1985). In analyzing the
scope of the claim, office personnel must rely on the appellants’ disclosure to properly
determine the meaning of the terms used in the claims. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995).
“[I]nterpreting what is meant by a word in a claim ‘is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper.’” (Emphasis
original) In re Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202,
1205, (Fed. Cir. 2002) (citing Intervet America Inc v. Kee-Vet Laboratories Inc. , 887
F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed. Cir. 1989)).
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007