Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
Appellants’ Specification the computer is told by user selection of the
“Find” button that the next user input will be a search string. In the claims
before us, we find the computer “recognizing said user input as one or more
search strings.” The normal meaning of the word “recognize” and as used
by Appellants’ Specification is “to identify.” Thus, the claims are directed
to a computer that identifies input as search strings which means that it is not
the user identifying the input as a search string and telling the computer.
Therefore, contrary to the Examiner’s and Appellants’ claim
constructions, the claimed “recognizing” is not directed to the simpler two
part process of Appellants’ Specification. Rather, we have before us a
significantly more powerful process step where the computer recognizes the
type of input it is receiving without being told by the user.
B. § 103- The Examiner’s Prima Facie Case
The Examiner’s prima facie case for every rejection based on prior art
relies on a claim construction where a user writes in a search string in a find
dialog box and the system recognizes the search string as text. As we have
discussed above, such a claim interpretation is not appropriate. Thus, the
Examiner fails to present a prima facie case for the rejection of the claims
once the claims are properly interpreted.
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