Appeal No. 2006-3352
Application No. 09/682,520
interpreted by one of ordinary skill in the art.’” (quoting In re American Academy of
Science Tech Center, 367 F.3d at 1364, 70 USPQ2d at 1830 (Fed. Cir. 2004)).
Though a term is construed in view of the specification, we are also guided not to
read limitations from the specification into claims. SmithKline Beecham Corp. v. Apotex
Corp., 403 F.3d 1331, 1352, 74 USPQ2d 1398, 1412 (Fed. Cir. 2005).
“The court's motivation notwithstanding, the practice of reading limitation from
written descriptions into claims invariably leads to misconstrued claims. Simply
pointing to discussions in the specification or prosecution history cannot rebut the
presumption that claims should be afforded their ordinary meanings.” CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366, [62 USPQ2d 1658, 1662]
(Fed. Cir. 2002). “We recognize that 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.” Comark Communications v. Harris Corp., 156 F.3d 1182,
1187, [48 USPQ2d 1001, 1005] (Fed. Cir. 1998) (citations omitted). “In this case,
there is little doubt that the district court crossed that line.”
We find that reading into the term, “unique,” the requirement that the identifier be
unequivocally associated with one and only one conditional branch instruction being
found “true” crosses the line of reading limitations from the written description into the
claims.
Independent claims 13 and 14 are argued with parallel arguments as those for
claim 1, so we affirm the rejection of claims 13 and 14 under 35 U.S.C. § 102 with the
same reasoning as applied to claim 1.
Therefore, we will sustain the Examiner’s rejection of claims 1, 13 and 14 under
35 U.S.C. § 102(b) as being anticipated by Wisor.
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