Ex parte REGAN et al. - Page 5




          Appeal No. 98-1689                                                          
          Application No. 07/715,259                                                  


          the description of the drawings and entered a disclaimer into               
          the specification regarding broken line illustrations in the                
          drawings.  Most importantly, appellants amended the drawings                
          to show broken lines around the original depiction of the                   
          icon.                                                                       
               The examiner contends that such amendments constitute new              
          matter and that there is no support in the original disclosure              
          for that which is now claimed, within the meaning of the                    
          written description requirement of 35 U.S.C. 112, first                     
          paragraph.                                                                  
               Appellants contend that there is adequate support since                
          the original disclosure specified that the Page Retrieval Icon              
          is “for a computer display” and that the original disclosure                
          of a “computer display” should constitute adequate support for              
          that which is now claimed.                                                  
               We agree with the examiner [answer-page 5] that the mere               
          mention of a “computer display” could “mean a multiplicity of               
          visual representations--a three dimensional computer monitor,               
          a display on a photocopier, a display on a dashboard of an                  
          automobile, a display on an automatic teller machine, a narrow              
          display screen, a large display screen, a circular screen, a                
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