Appeal 2007-0475
Application 10/047,312
manage a device is necessarily “derived from management data” related to
that device; else, the application would be unable to interface with the device
to perform management functions. (Answer 13.) Appellants’ response to
the rationale for inherency is the observation that Agnihotri does not
describe how the applets are created (Appeal Br. 9; Reply Br. 3), which does
not show error in the finding of inherency.
Appellants also allege that the word “derived” relates to several non-
trivial steps that are described in the Specification. (Reply Br. 2-3.) As the
Examiner indicates, however, instant claim 1 does not recite, nor does it
require, any of those steps. During patent prosecution, the scope of a claim
cannot be narrowed by reading disclosed limitations into the claim. See In
re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In
re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re
Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969). Our
reviewing court has repeatedly warned against confining the claims to
specific embodiments described in the specification. Phillips v. AWH Corp.,
415 F.3d 1303, 1323, 75 USPQ2d 1321, 1334 (Fed. Cir. 2005) (en banc).
We are thus not persuaded of any error in the Examiner’s finding of
anticipation with respect to claim 1. Claims 8 and 15, not separately argued,
fall with claim 1.
Appellants submit that Agnihotri fails to teach translation files
“corresponding to at least one national language,” as required by
independent claim 25. (Appeal Br. 10-11.) Appellants rely on column 5,
lines 43 through 51 of Agnihotri in support of the view that the word
“language” as used in the reference refers to a programming language. (Id.)
The Examiner relies on the same text in Agnihotri but asserts that the artisan
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013