Appeal 2007-2250
Application 09/818,480
Office personnel must rely on Appellant’s disclosure to properly
determine the meaning of the terms used in the claims. Markman v.
Westview Instruments, Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed.
Cir. 1995). “[I]nterpreting what is meant by a word in a claim ‘is not to be
confused with adding an extraneous limitation appearing in the specification,
which is improper.’” (emphasis original) In re Cruciferous Sprout
Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205 (Fed. Cir. 2002)
(citing Intervet America Inc v. Kee-Vet Laboratories Inc., 887 F.2d 1050,
1053, 12 USPQ2d 1474, 1476 (Fed. Cir. 1989).
ANALYSIS
Independent claim 1 recites “capturing … the name and physical
address of the recipient and the sender in the form of an image … the image
is processed by translating the image consisting of text and graphics to
selected alphanumerics … translating the name and physical address of the
recipient into an e-mail address.” Thus, we find the scope of claim 1
includes that an image of the letter which contains a physical address is
captured, and the physical address is translated into an e-mail address.
As discussed supra, we do not find that either of the Smith references
teaches translating a physical address to an e-mail address, nor do we find
that Higgins teaches this step.1
CONCLUSION
We consider the Examiner’s rejection under 35 U.S.C. § 103(a) to be
in error as we do not find that the combination of the references applied by
1 We note that Kuebert, US 2002/0165729 A1 (of record) does appear to
teach this limitation, see paragraphs 22, 27, 36.
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