Appeal 2007-1539
Application 09/741,362
USPQ2d 1943, 1945 (Fed. Cir. 1999) (“In other words, if granting patent
protection on the disputed claim would allow the patentee to exclude the
public from practicing the prior art, then that claim is anticipated, regardless
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
ANALYSIS
With respect to the 35 U.S.C. § 102(e) rejection of independent claims
1, 10, 16, and 26 based on the teachings of Liu, the Examiner indicates
(Answer 3-4) how the various limitations are read on the disclosure of Liu.
In particular, the Examiner directs attention to the illustration in Figure 6 of
Liu, as well as the disclosure at column 2, lines 15-25, column 5, lines 30-
67, and column 17, lines 15-55 of Liu.
Appellants’ arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of Liu so
as to establish a prima facie case of anticipation. Appellants’ arguments (Br.
6-7; Reply Br. 5) initially focus on the contention that, in contrast to the
requirements of the appealed claims, Liu never makes any determination or
verification that identified users are part of a test group.
After reviewing the disclosure of Liu in light of the arguments of
record, we are in general agreement with Appellants’ position as stated in
the Briefs. We find no support in the portion of Liu (column 4, lines 36-41),
or elsewhere in Liu, for the Examiner’s finding that the users in Liu are “test
subjects” since they have been selected out of a larger group. To the
contrary, our interpretation of the disclosure of Liu coincides with that of
Appellants, i.e., all users in Liu are provided with an identification and their
web activity is observed and tracked with no indication that any particular
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013