Appeal No. 1999-2057
Application 08/405,062
Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed.
Cir. 1986)). A patent need not teach, and preferably omits,
what is well known in the art. Paperless Accounting, Inc. v.
Bay Area Rapid Transit System, 804 F.2d 659, 664,
231 USPQ 649, 652 (Fed. Cir. 1986). The U.S. Patent and
Trademark Office must support a rejection for lack of
enablement with reasons. In re Wright, 999 F.2d 1557,
1561-62, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).
The Examiner states (EA6-7):
The claims are confusing for the reason that the
virtual meeting room is not clearly defined by the
written description. Since the virtual meeting room
cannot be properly defined how can the virtual meeting
room be controllably persistent?
The examiner understands that since participants
come and go, the ability of the participants to access
the communication remains in tack [sic, intact], however,
the "meeting room" cannot clearly be defined.
The Examiner's use of terms and phrases such as
"confusing", "not clearly defined," "cannot be properly
defined," and "cannot clearly be defined," make us question if
the rejection is intended to be under 35 U.S.C. § 112, second
paragraph, for indefiniteness rather than under § 112, first
paragraph, for lack of enablement. Similarly, the Examiner
statements in the remarks that the definition of virtual
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