Appeal No. 1997-3481
Application 08/476,543
applications. The appendix has apparently been treated as an
appendix that is not part of the printed patent under
§ 1.96(b). We find no disclosure of auto-discrimination in
the specification itself. We agree with the Examiner's
comments (at EA3) that the portion of the disclosure at
page 16, lines 13-21, mentioned in the Brief (Br3), has
nothing to do with auto-discrimination. While Appellants are
entitled to rely on the disclosure in the appendix, the
description portion of the specification should be amended to
describe the auto-discrimination functionality described in
the appendix so that persons reading the patent will have a
self-contained document that enables the claimed subject
matter. See 37 CFR § 1.96 ("Descriptions of the operation and
general content of computer program listings should appear in
the description portion of the specification.").
The Examiner states that "page 38 of the computer
printout does not have sufficient clarity to positively
determine exactly what is happening" (EA3) and "[p]age 38 of
the computer printout sensibly relates to nothing disclosed"
(EA3). The Examiner is apparently responding to statements
made in the response to the first Office action.
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