Appeal No. 2001-1528
Application No. 08/998,661
interpretation during prosecution, and 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).
Instant claim 1 recites “retrieving from the server computer to the client
computer, the information elements in ranked order, and acting on retrieved elements in
the order received.” Consistent with appellant’s disclosure, “acting on” retrieved
elements may be as simple as displaying text, or displaying an image file. (See
specification at 2, ll. 1-8.) Contrary to the implications of appellant’s position set forth in
the Brief, however, there is nothing in the claim that excludes user input to cause the
“retrieving from the server computer to the client computer, the information elements in
ranked order.”
Consider the case where a user’s query in the Byrd system retrieves two “hits,”
which are presented to the user as two document titles ordered with respect to
relevance. The “retrieving” set forth in claim 1 may be in response to a user clicking on
the first title in the hit list to retrieve the first document, then clicking on the second title
in the hit list to retrieve the second document.
The Byrd reference is not express in describing the above-noted example of
operation, but the artisan would have immediately recognized that Byrd’s system
operates in the manner we describe. “A reference anticipates a claim if it discloses the
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