Appeal 2006-3269
Application 10/734,811
the scope of the claims in patent applications “not solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction ‘in light of
the specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir.
2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364,
70 USPQ2d 1827, 1830 (Fed. Cir. 2004)). We must be careful not to read a
particular embodiment appearing in the written description into the claim if the
claim language is broader than the embodiment. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d 1865, 1868-69 (Fed. Cir. 2004)
(“Though understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular embodiment
appearing in the written description may not be read into a claim when the claim
language is broader than the embodiment.”) The challenge is to interpret claims in
view of the specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369, 67 USPQ2d 1947, 1950 (Fed. Cir. 2003).
ANALYSIS
Appellants argue all of the claims as a group (Br. 6). As such, we treat claim
1 as the representative claim.
Appellants argue that the Examiner’s definition of email, “electronic
communication through a computer,” is too broad (Br. 7-8). Appellants contend
6
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Last modified: September 9, 2013