Appeal 2007-1355
Application 09/735,499
indicating the number of unread messages) and for which a notification has
not been cleared (see Fig. 3A, window 40, i.e., the “unread/tot” column
indicating the number of unread messages, where the number is a non-zero
integer if the message has not been read). We find Helfman discloses that if
all the messages in a mailbox have been read, then the count of unread (new)
messages is cleared with a zero as indicated in the “unread/tot” column (id.).
We further find that if at least one message in a mailbox has not been read,
the notification (i.e., unread count) is not cleared (i.e., is a non-zero number).
See Fig. 3A, col. 5, ll. 26-38.
In the Reply Brief, Appellants further argue “the claim recites listing
messages that are new and for which a notification has not been cleared. Not
listed are messages that are new, but for which a notification has been
cleared.” (Reply Brief 2, last paragraph, emphasis added).
We note the argued negative limitation “[n]ot listed are messages that
are new, but for which a notification has been cleared” is not claimed (id.).
Appellants are arguing limitations found only within the Specification. We
note that patentability is based upon the claims. “It is the claims that
measure the invention.” SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107,
1121, 227 USPQ 577, 585 (Fed. Cir. 1985) (en banc). A basic canon of
claim construction is that one may not read a limitation into a claim from the
written description. Renishaw plc v. Marposs Societa' per Azioni, 158 F.3d
1243, 1248, 48 USPQ2d 1117, 1120 (Fed. Cir. 1998). Here, we decline to
read the limitations from the Specification (as argued by Appellants) into the
claim. Because we find Helfman discloses all that is claimed, we find the
Examiner has met the burden of presenting a prima facie case of
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