Ex Parte Siegel et al - Page 4


                Appeal 2007-1517                                                                                   
                Application 09/726,973                                                                             
                       Rather than repeat the arguments of Appellants or the Examiner, we                          
                make reference to the Briefs, the Final Action, and the Answer for the                             
                respective details thereof.                                                                        
                                       Written Description Requirement                                             
                       The Examiner has raised a new ground of rejection for claims 1-18                           
                under 35 U.S.C. § 112, first paragraph (Answer 4).  The Examiner contends                          
                the Specification fails to disclose assigning a unique ID to each device                           
                among a plurality of devices used for presenting the personalized                                  
                information, in addition to using the assigned unique ID in the manner                             
                claimed (id.).  In particular, the Examiner finds the disclosure of paragraphs                     
                [0006], [0009], and [0012] inadequate to support the instant claims (id.).                         
                       In response, Appellants contend support can be found in the                                 
                Specification at pages 2-4, paragraphs [0007]-[0011] (Reply Br. 4-5).                              
                       We note that the Court of Appeals for the Federal Circuit has held that                     
                “[t]o fulfill the written description requirement, the patent specification must                   
                describe an invention in sufficient detail that one skilled in the art can clearly                 
                conclude that the inventor invented what is claimed.”  Cordis Corp. v.                             
                Medtronic AVE, Inc., 339 F.3d 1352, 1364, 67 USPQ2d 1876, 1885 (Fed.                               
                Cir. 2003) (citations omitted). Our reviewing court has cautioned, however,                        
                that “[t]he disclosure as originally filed does not . . .  have to provide in haec                 
                verba support for the claimed subject matter at issue.” id. at 1364, 67                            
                USPQ2d at 1885.  “Although [the applicant] does not have to describe                               
                exactly the subject matter claimed, . . . the description must clearly allow                       
                persons of ordinary skill in the art to recognize that [he or she] invented                        
                what is claimed.”  In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614,                             


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