Appeal No. 2006-2584
Application No. 09/797,754
In any event, we have reviewed the evidence before us and we conclude
therefrom that the examiner has not established the requisite prima facie case
for a finding of anticipation of claims 1, 3-20, 25, 26, and 28-35.
It is clear that the examiner is reading the claimed “documents” on
database records in Fish, since the examiner refers to column 5, lines 11-25, of
the reference. Such database records do not appear to be reasonably equated to
appellants’ “documents.” We agree with appellants that, in accordance with
Phillips v. AWH Corp, 415 F.3d 1303, 1323, 75 USPQ2d 1321, 1334 (Fed. Cir.
2005), the specification is always highly relevant to a claim construction
analysis. A review of the instant specification reveals that “documents” appears
to relate to something users search for on the World Wide Web or on any other
corpus. Whether such other corpus would include database files is debatable.
What is not debatable, however, is that the instant claims require not
merely an identification of “documents,” but also that each of those documents
be assigned a score “based on at least the usage information” (claim 1) or that
the documents be organized “based on at least the usage information” (claim
16) or that the documents be assigned a score “based on the usage information”
and “organizing the documents based on the assigned scores” (claims 25 and
-4-
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