Appeal No. 2004-0945
Application No. 09/605,929
horizontal scrolls can be equated to the claimed automatically
scrolling while stopping the other frames.
Additionally, vertical scrolls 500a, 500b and 500c, as
recognized by the Examiner (answer, page 5), scroll the windows
independently and cannot perform the step of “automatically
stopping the scrolling of a frame when its beginning or end is
displayed while continuing to scroll the other of said frames,”
as recited in claim 1. We also remain unconvinced that the claim
requires two separate commands for scrolling each of the first
and second frames. As “[t]he starting point for any claim
construction must be the claims themselves,” Pitney Bowes, Inc.
v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165
(Fed. Cir. 1999), we start with the words recited in claim 1.
Considering the limitations of “receiving a command to scroll”
and “scrolling each frame ... in response to said command,” we
find no plausible way to read claim 1 onto independently
controlled vertical scrolls of Onda.
A rejection for anticipation under section 102 requires that
the four corners of a single prior art document describe every
element of the claimed invention, either expressly or inherently,
such that a person of ordinary skill in the art could practice
the invention without undue experimentation. See Atlas Powder
-5-
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