Appeal No. 95-4377
Application 08/160,348
Both claims stand rejected under 35 U.S.C. § 112, second
paragraph, and also under § 103 as unpatentable for obviousness
over the following reference:
Cowart "Mastering Windows™ 3.1" 19932
A. The § 112 rejection
The examiner contends that the terms "may be" and "one or
more" in the phrase "may be applied to one or more objects"
render each claim indefinite: 3
"[M]ay be" is indefinite since it includes the meaning of
may not be. "[O]ne or more" is indefinite since it appears
that a process defined for the execution of one object may
not be used for more than one object. [Examiner's emphasis.]
[Final Office action at 2.]
We agree with Appellants that while it is true that a process
which is predefined for execution with only one object may not be
used with another object, it is also true that a process which is
2The Answer additionally cites, as "technical background,"
the following two articles: Tempo II, the Next Step in Macintosh
Automation, Affinity Microsystems, Ltd., 1988, pp. 1-117 (of
which only pages 33-117 are in the application file); and Takada
et al., A Method of Generating User-Desired Service Macro in an
Icon-Based Environment, 8169 Systems & Computers in Japan 19
(1988), sec. 5.5. Since these articles are not relied on the
rejection, they have not been considered. In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970); Ex parte
Movva, 31 USPQ2d 1027, 1028 n.1 (Bd. Pat. App. & Int. 1993).
3The examiner's criticism of the term "which" (final
Office action at 2) is not repeated in the Answer and is
therefore treated as withdrawn.
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