Appeal 2006-2696
Application 10/266,954
The Examiner responds that claim 37, without the “whereby” clause,
would not read on a midware server that represents subclients as multiple
clients or as single clients, because such recitation is not found in the claim.
(Answer 9-11.)
In our view, the Examiner’s position fails to demonstrate that the
“whereby” clause is not entitled to patentable weight. We agree with
Appellant that the language with respect to a midware server representing
subclients as multiple clients or as single clients need not be express in the
claim for the claim to cover both alternatives. In particular, the “whereby”
clause of claim 37 may be read as further limiting the subject matter of the
claim, by restricting the claim to the second (single client) alternative.
Otherwise, without the express restriction, the claim by the absence of
limiting language would cover both alternatives.
Moreover, although the language contained in the “whereby” clause
of claim 37 is neglected in the statement of the rejection (Answer 3-4), claim
75 is rejected on the “same rationale” as claim 37 (id. at 8). Claim 75,
however, recites a midware server comprising task processing circuitry that
functionally represents the wireless communication devices as a single client
to the enterprise management system. The rejection of claim 75 does not
purport to show disclosure or suggestion of the task processing circuitry,
even though there is no question with respect to the patentable weight to be
given a “whereby” clause.
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