Appeal No. 96-1119
Application 07/690,176
program as part of the claims as the examiner apparently
proposes. The artisan having considered the specification of
this application would have no difficulty ascertaining the
scope of the invention included within the phrase “the
computer program shown in FIGS. 5 through 182.” Therefore,
the rejection of claims 2, 4, 6 and 8 under the second
paragraph of 35 U.S.C. § 112 as set forth in the final
rejection is not sustained.
The examiner made several additional objections to the
claims under 35 U.S.C. § 112 in the examiner’s answer. These
objections were made for the first time in the examiner’s
answer, but the examiner never identified these objections as
constituting a new ground of rejection which they were. As a
result of these new objections under 35 U.S.C. § 112,
appellants filed an amendment concurrently with a reply brief
to specifically address these new objections to the claims.
As noted above, this amendment was entered by the examiner.
For reasons which remain a mystery at this point, the examiner
never addressed what effect the entered amendment had on the
rejection under 35 U.S.C. § 112.
The examiner objected to the terms “directly,”
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