Ex parte PENDSE et al. - Page 5




          Appeal No. 1999-2304                                                        
          Application 08/667,242                                                      


          Mahurkar, 935 F.2d 1555, 1564, 19 USPQ2d 1111, 1117 (Fed. Cir.              
          1991).                                                                      
          The rejection asserts that the specification does not                       
          provide written description support for the recitation “remote              
          independent public directory services having names and                      
          electronic conference connection addresses of a plurality of                
          persons” in each of the independent claims.  The examiner                   
          particularly questions the “public” of public directory                     
          services [answer, pages 4-5].  Appellants argue that the                    
          recitation in question clearly appears in the specification at              
          several locations except for the term “remote” [brief, page                 
          9].  Appellants note, however, that Figure 1 of the                         
          application clearly shows that the directory services 108 are               
          separate or remote from the execution unit 104.  The examiner               
          responds that there are two meanings for the term “public” and              
          the specification does not support the meaning argued by                    
          appellants [answer, pages 9-10].  Appellants respond that the               
          disclosed use of the Deutches Telecom T-Online directory                    
          service is clearly a remote independent public directory                    
          service as claimed [reply brief].                                           
          We agree with the position argued by appellants for                         
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