Appeal 2007-0901
Application 10/063,402
Appellants are either implicitly reading limitations from the
Specification into the claims, or fail to appreciate what anticipation requires.
The law of anticipation does not require that a reference “teach” what
an applicant’s disclosure teaches. Assuming that a reference is properly
“prior art,” it is only necessary that the claims “read on” something disclosed
in the reference, i.e., all limitations of the claim are found in the reference, or
“fully met” by it. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218
USPQ 781, 789 (Fed. Cir. 1983). We can agree with Appellants’ position to
the extent that the reference teaches that returning the processed request for
further action by the administrative entity may be preferred, or may be more
frequent, as compared to providing the processed request directly to the end-
user. However, the reference clearly sets forth the alternative of providing
the processed request directly to the end user.
Instant claim 5, and in particular part (a) that sets forth the step of
“isolating administrative access,” does not preclude that some or even most
management actions (e.g., remote initiation of services) may be performed
by direct action between the administrator system and client systems.
Moreover, so far as the language of part (a) is concerned, the isolation of
administrative access may be no different from the requirement in the
reference that an administrative entity must request permission from the
serving entity before acting on client systems (e.g., Batten-Carew col. 4, l.
21 - col. 5, l. 12), thus isolating administrative access to the client systems
via a data center. The claim is the place to express the limitations that are
thought to distinguish over the prior art. “An essential purpose of patent
examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be
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