Ex parte SHWARTS et al. - Page 13




          Appeal No. 97-1223                                        Page 13           
          Application No. 08/147,143                                                  


          located with respect to subjects in an electronic book.                     
          (Spec. at 15.)  Neither Capps, Soviero, nor Slate suggests                  
          such an indicator.  For the foregoing reasons, the examiner                 
          failed to show the references would have suggested displaying               
          a browser as in independent claim 14 and its dependent claims               
          15-18 and 40.  Accordingly, we find the examiner’s rejection                
          of these claims does not amount to a prima facie case of                    
          obviousness.  Because the examiner has not established a prima              
          facie case, the rejection of claims 14-18 and 40 is improper.               
          Therefore, we reverse the rejection of claims 14-18 and 40                  
          under 35 U.S.C. § 103.                                                      


                          Rejection of Claims 31 and 35-38                            
               We begin our consideration of the obviousness of claims                
          31 and 35-38 by recalling that during patent examination,                   
          pending claims must be given their broadest reasonable                      
          interpretation.  Limitations from the specification are not to              
          be read into the claims.  In re Van Geuns, 988 F.2d 1181,                   
          1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993); In re Prater, 415              
          F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969).  With this in               
          mind, we address the appellants’ arguments.                                 







Page:  Previous  6  7  8  9  10  11  12  13  14  15  16  17  18  19  20  Next 

Last modified: November 3, 2007