Appeal No. 2003-1614 Page 6
Application No. 09/817,692
limitations. In summary, the independent claims of Roth require selecting a first web
page from a list of web pages.
In contrast, claim 1 of the instant application recites in pertinent part the following
limitations: "said web browser automatically selecting said initial web page from a
plurality of web pages during initialization of said web browser. . . ." Claims 3 and 5 of
the application recite similar limitations. Claim 2 of the application, which depends from
claim 1, recites in pertinent part the following limitations: "said plurality of web pages
make up an ordered list of web pages." Claims 4 and 6 of the application, which
respectively depend from claims 3 and 5, recite similar limitations. In summary,
although claims 1-6 of the application require selecting a web page from an ordered list
of web pages, the claims do not require that selected web page be the first web page
from the list. Because the claims of the application do not require that the web page
selected be the first web page, we agree with the appellant that "a mechanism could
very well literally infringe one of the rejected claims [of the application] without literally
infringing [c]laim 1 of U.S. Patent No. 6,226,060. . . ." Therefore, we reverse the
statutory double patenting rejection of claims 1-6.
Despite the impropriety of the statutory rejection, obviousness follows ipso facto
from an anticipatory reference. RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d
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