Appeal No. 2001-1528
Application No. 08/998,661
claimed invention ‘such that a skilled artisan could take its teachings in combination
with his own knowledge of the particular art and be in possession of the invention.’” In
re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995) (quoting In re
LeGrice, 301 F.2d 929, 936, 133 USPQ 365, 372 (CCPA 1962)).
We do not find language in any of the independent claims that sets forth the
“automatic” operation that is argued by appellant. Instant claim 11 requires that “code”
retrieves the information elements in ranked order. In the Byrd system, the “code” (i.e.,
software instructions) comprises a portion of the hardware and software that do the
actual retrieving, after user input to initiate the action. Instant claim 21 recites “a
mechanism configured to retrieve” the information elements in ranked order. In the
Byrd system, computer hardware and software perform the actual retrieval. Instant
claims 31 and 34 recite retrieving “information elements” or “information” in yet broader
terms than the other independent claims.
With respect to the dependent claims, appellant argues (Brief at 6-7) that Byrd
does not anticipate the claims because of alleged failure to show “an audio file,” an
“applet,” or “playing an audio file.” However, the corresponding dependent claims do
not require the features appellant allege as missing from Byrd. Claim 9, for example,
requires “one of” a list of features, which includes “displaying text.” Claim 10, as further
example, requires that the information element is “one of” a list of features, which
includes “text.” Byrd at the least discloses text documents that are retrieved and
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