Appeal No. 2004-0587
Application 09/054,304
as to this question. Therefore, we will not sustain the
Examiner’s rejection of the claims under 35 U.S.C. § 112, first
paragraph.
Rejection under 35 U.S.C. § 102
It is axiomatic that anticipation of a claim under § 102
can be found only if the prior art reference discloses every
element of the claim. See In re King, 801 F.2d 1324, 1326, 231
USPQ 136, 138 (Fed. Cir. 1986) and Lindemann Maschinenfabrik GMBH
v. American Hoist & Derrick Co., 730 F.2d 1452, 1458, 221 USPQ
481, 485 (Fed. Cir. 1984).
The Examiner has interpreted the language “one-way direct
data transmission from the second server to the client” as a
negotiated bi-directional communication between the server and
the client. See page 18 of the Examiner’s answer. For
Independent claims 11 and 20 through 22 the Examiner has
interpreted similar language in this same way. See page 20 of
the Examiner’s answer.
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). Furthermore, “the terms used in the
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