Appeal 2006-2559
Application 10/189,476
Appellants now argue (Request 2) that “in the species under
examination” within method claim 1 and system claim 17, “the at least one
biomarker comprises neovasculature characterization,” the step (b) in
claim 1 and the processor (b) in claim 17 take “a higher-order measure of the
at least one biomarker, and the higher-order measure comprises
eigenfunction decompositions.” Appellants contend that the method step (b)
in claim 1, and the operation of the processor (b) in claim 17 “must be read
in light of the election of species” made by Appellants (Request 1 and 2).
According to Appellants, “the Decision on Appeal does not address or even
mention the above-noted limitations of the species under examination,” and
the anticipation rejection of claims 1 and 17, and the claims that depend
therefrom, should be reversed because “the Appellants did present
patentability arguments for those claims, when read in light of the species
under examination” (Request 2).
Our reviewing court has stated that “limitations from the specification
must not be imported into the claims.” Nazomi Communications, Inc. v.
ARM Holdings, PLC, 403 F.3d 1364, 1368, 74 USPQ2d 1458, 1461 (Fed.
Cir. 2005). Reading a claim in light of the specification to interpret broadly
worded limitations explicitly recited in the claims is a quite different thing
from reading limitations of the specification into a claim to thereby narrow
the scope of the claim by implicitly adding disclosed limitations which have
no express basis in the claims. In re Prater, 415 F.2d 1393, 1405, 162
USPQ 541, 551 (CCPA 1969).
Appellants’ arguments in the request are not commensurate in scope
with the inventions set forth in claims 1 and 17 on appeal. Neither claim 1
2
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