Appeal No. 2003-1025
Application No. 09/224,918
filed teaches removing data from the cache occurs "on a regular,
periodic basis to ensure security of the resources on the
server." That is, the disclosure as originally filed teaches
there are two processes operating on some of the same data, but
they are otherwise separate processes. (This is the disclosed
invention.)
The Examiner has chosen to interpret and examine claim 1 as
though it were the "disclosed invention" rather than the "claimed
invention" recited in claim 1. This is not appropriate, as it
does not comply with the requirements for the Examiner's action
found in 37 CFR § 1.104 (a)(1), as follows:
On taking up an application for examination or a patent
in a reexamination proceeding, the examiner shall make
a thorough study thereof and shall make a thorough
investigation of the available prior art relating to
the subject matter of the claimed invention. The
examination shall be complete with respect both to
compliance of the application or patent under
reexamination with the applicable statutes and rules
and to the patentability of the invention as claimed,
as well as with respect to matters of form, unless
otherwise indicated. (Emphasis added)
The Examiner must examine the "invention as claimed" by the
applicant even when there is an alleged conflict with the
disclosure. Because the Examiner admits he has not examined the
claim before us on appeal, we find that the Examiner has not met
the initial burden of establishing a prima facie case of
obviousness of claim 1.
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