Appeal No. 2001-1791
Application No. 08/992,038
a “load,” as recited in instant claim 1. Second, claims are to be given their broadest
reasonable 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).
We therefore are not persuaded of error in the section 103 rejection of claim 1.
Appellants group claims 4, 5, 10, 11, 14, and 15 with claim 1, and do not provide
separate arguments for any of the other claims grouped with claim 1. We thus sustain
the rejection of claims 1, 4, 5, 10, 11, 14, and 15 under 35 U.S.C. § 103 as being
unpatentable over INTERNET and Sitbon. See 37 CFR § 1.192(c)(7).
However, we agree with appellants (Answer at 11-12) that the examiner has
failed to set forth a prima facie case of obviousness for the subject matter of claims 2,
3, and 12. At best, the combination of INTERNET, Sitbon, and Rege demonstrates that
data requests “can be” assigned to a bucket based on a source address, which
represents an improper standard in the obviousness inquiry. Further, we find that the
Rege reference’s general statement at column 2, lines 20 through 27 would not have
led the artisan to make the combination required by claim 2 or claim 12. We therefore
do not sustain the rejection of claims 2, 3 (depending from claim 2), and 12 under 35
U.S.C. § 103 as being unpatentable over INTERNET, Sitbon, and Rege.
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