Appeal No. 2000-2012
Application No. 08/937,354
Appellants argue that the subsequent request is different and the results are different.
(See brief at pages 9-10.) Appellants provide an example from the specification to
distinguish the claimed invention from that taught by Abraham. (See brief at pages
9 and 10.) As pointed out by our reviewing court, we must first determine the scope of
the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). We find no limitations in independent
claim 1 that define or limit the analysis to be different or the results to be different.
Therefore, this argument is not persuasive. Appellants argue that element (e) requires
that the second request is honored by dividing the second request into the first analysis
and a third analysis, and the first analysis is utilized to obviate the need to again
perform the first analysis. (See brief at page 11.) Appellants argue that there is “no
division of the second analysis into the first analysis and a third analysis . . . there can
be no combining of the results of this third analysis with the previously saved results of
the first analysis.” (See brief at page 12.) Appellants argue, therefore, that the
rejection is clearly erroneous. We disagree with appellants and do not find support for
appellants' arguments in the language of independent claim 1. Therefore, we will
sustain the rejection of independent claim 1 and its dependent claims 2-4 which
appellants elected to group therewith. Additionally, we note that there is no step of
making a division or determination by a machine that a second analysis also requires
the performance of the first analysis or that the results will be different from the results
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