Appeal 2007-3787
Reexamination 90/006,642
Patent 4,944,298
1 The claim feature at issue in this rejection concerns the phrase
2 “comprises hardware, software and/or firmware” in each of claims 23 and
3 26. There is no dispute between the Examiner and the Applicant that this
4 claim language is broad and covers the case of hardware alone, software
5 alone, firmware alone, a combination of any two of the group, or all three
6 hardware, software, or firmware. That follows from the ordinary meaning of
7 the connector term “and/or.”
8 It is because the coverage is too broad that the Examiner rejected
9 claims 23 and 26 for lack of written description in the specification.
10 According to the Examiner, the specification does not reveal an appreciation
11 for a scope of invention having the same breadth as that claimed. The
12 specification does not convey that the Applicant possessed an invention
13 having the same scope as that claimed.
14 Specifically, the Examiner explained (Answer 3:18 to 4:2):
15 Amended claims 23 and 26 contain the limitation of
16 “hardware, software, and/or firmware” for the means for
17 providing or means for triggering. The phrase could mean it
18 comprises software by itself, firmware by itself, or a
19 combination of hardware, software, and firmware. These
20 combinations were not originally disclosed since the original
21 specification in column 11, lines 57-59 state that the “control
22 system 26 of FIG. 2 may be realized using dedicated hardware
23 circuits, or by using a combination of hardware and software
24 (or firmware) circuits”.
25
26 Thus, the Examiner clearly expressed that the original disclosure does
27 not support the case of (1) software alone, (2) firmware alone, or (3) all three
28 hardware, software, or firmware, all of which are within the scope of the
29 Applicant’s amended claims. Of these three items raised by the Examiner,
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