Ex Parte Hayashi

Board of Patent Appeals and Interferences

Aug 31, 2001

08121255 (B.P.A.I. Aug. 31, 2001)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 43
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASATAKE HAYASHI
____________
Appeal No. 1996-2437
Application No. 08/121,255
____________
ON BRIEF
____________
Before HAIRSTON, LALL, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
REQUEST FOR REHEARING
In a decision dated November 8, 1999, the decision of the
examiner rejecting claims 1 through 12 and 18 through 20 under 35
U.S.C. § 103 was affirmed.
Appellant argues (Request, page 2) that the Board
misinterpreted the phrase "continuous space." Appellant
(Request, pages 2 and 3) points to portions of the specification
to show how "continuous space" should be interpreted. As we
explained in our decision of November 8, 1999, although the
claims are to be read in light of the specification, we will not
read limitations from the specification into the claims. See
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co. , 849 F.2d
Appeal No. 1996-2437
Application No. 08/121,255
2
1430, 1433, 7 USPQ2d 1129, 1132 (Fed. Cir. 1988); In re Prater,
415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969). "Claims are
to be given the broadest reasonable interpretation." In re
Pearson, 494 F.2d 1399, 1404, 181 USPQ 641, 645 (CCPA 1974).
Appellant contends (Request, page 3) that the recitation in
claims 1 and 8 that at least two second electrodes are arranged
so that the corresponding discharge regions form a continuous
space means that "at least two sets of second electrodes are
spaced close enough to each other that the two parallel discharge
regions formed about the two sets of second electrodes overlap,
thus forming one continuous space over the lengths of the two
sets of second electrodes." Although we agree that a continuous
space "over the lengths of the two sets of second electrodes"
would require more than passages connecting adjacent units, the
claims only recite that the space for at least two units is
continuous, which broadly interpreted means connected.
Appellant's interpretation reads limitations from the
specification into the claims.
Similarly, appellant asserts (Request, page 3) that claims 5
and 18 recite that the discharge region "forms a continuous space
over all of the second electrodes," and that claim 19 recites
that the discharge region "forms a continuous space over a
plurality of second electrodes," but the claims do not require
Appeal No. 1996-2437
Application No. 08/121,255
3
that the space be continuous over all or plural of the
electrodes. The claim language merely requires that the
discharge region "of all the scanning units" or "for a plurality
of scanning units" is formed as a continuous space, which broadly
interpreted means that the discharge regions for all of the
scanning units are interconnected.
Appellant argues (Request, page 3) that "it was
inappropriate for the Board to interpret the 'continuous space'
of the discharge region or the space between at least one of the
sets of scanning units to be separated by a barrier. This
interpretation is not consistent with the text of the claims."
However, the text of the claims does not preclude barriers. The
text of the claims merely requires that the regions be
interconnected or, rather, that there be passages through the
barriers, which Buzak has. Appellant's claims merely require a
continuous space, not a continuous space over the lengths of the
electrodes. Therefore, our affirmation of the rejection over
Buzak, with Ngo being cumulative, is proper.
Accordingly, appellants' request has been granted to the
extent that our decision has been reconsidered, but such request
is denied with respect to making any modifications to the
decision.
Appeal No. 1996-2437
Application No. 08/121,255
4
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REHEARING
DENIED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PARSHOTAM S. LALL ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
apg/vsh
Appeal No. 1996-2437
Application No. 08/121,255
5
HILL, STEADMAN & SIMPSON
A PROFESSIONAL CORPORATION
85TH FLOOR SEARS TOWER
CHICAGO, IL 60606