Appeal No. 2006-2584
Application No. 09/797,754
Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
In the instant case, the issue is whether the examiner has established a
prima facie case of anticipation by showing that Fish describes “documents”
that are identified and “assigning a score to each document based on at least the
usage information.”
The examiner relies on a dictionary definition of “document” as “any self-
contained piece of work created with an application program and, if saved on disk,
given a unique filename by which it can be retrieved…” (see page 11 of the answer).
Appellants contend that the examiner’s interpretation of “document” is unreasonably
broad and that the examiner has improperly ignored the instant specification which is
better evidence of how the skilled artisan would have interpreted the term as used in
the instant claims. In particular, appellants contend that in view of the specification,
the artisan would have interpreted “document” as “including something users search
for on the World Wide Web, such as a Web page for example” (page 10 of the
substitute supplemental appeal brief). The problem with appellants’ definition is that
page 13 of appellants’ own specification indicates that while the general description
pertains to the operation of a search engine in the context of a search of documents on
the World Wide Web, the search engine “could be implemented on any corpus.”
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