Tuesday, April 23, 2013

Unclaimed features cannot impart patentability to claims

from within Ex parte Bicheno

As such, Appellants’ arguments are not commensurate
in scope with the limitations of claims 1, 12, and 17. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Unclaimed features cannot impart patentability to claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998). We
therefore decline to read the argued limitations into the claims.

Of the use of --a or an--

In addition, to the extent that Appellants argue that “a destination”
requires a single destination or a single storage location (App. Br. 7; Reply
Br. 3), we remain unpersuaded. “[A]n indefinite article ‘a’ or ‘an’ in patent
parlance carries the meaning of ‘one or more’ in open-ended claims
containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic
Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000) (citations omitted).
Thus, “a destination” recited in Appellants’ claims 1, 12, and 17 refers to
one or more destinations.

Of broadest reasonable interpretation [BRI]

During prosecution
before the USPTO, claims are to be given their broadest reasonable
interpretation. See In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004)
(quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)).


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