Appeal No. 2002-0954 Page 4
Application No. 09/543,632
vocabulary word and a synonym of the selected vocabulary word in the complete
sentence. Independent claim 15 likewise recites steps of providing on the video
monitor a complete sentence utilizing a selected vocabulary word and a synonym of the
selected vocabulary word in the complete sentence.2
Sorensen discloses a computer program product and method for teaching
vocabulary wherein users may directly input the words of their choice into a user word
list along with associated information such as definitions, usage sentences, synonyms,
antonyms, etc. (column 7, lines 41-45). Sorensen also discloses presentation of
various learning frame settings which may include “the word only, the word with
definitions, the word with synonyms[3], example sentences, etc.” (column 10, lines 28-
30). Note Figures 8B and Appendix pages A3, wherein the vocabulary word itself is
enclosed in brackets in the example sentences, and A6, which illustrates a presentation
2 We note what appears to be an inconsistency between the subject matter of the claims as now
presented and appellant’s underlying disclosure. In particular, while appellant’s specification (page 5 and
Figure 3) discloses presentation of a selected vocabulary word in a complete sentence “with the
meaning/definition of the word as used in the sentence indicated within brackets, parentheses or
otherwise punctuated” per operations block 46, the specification discloses only the presentation of a
“listing of synonyms” (page 6) per decision block 60 when requested by the user. Appellant’s specification
does not disclose the presentation of the use of the “synonyms” in a sentence per decision block 60, as
called for in the claims as now presented. While we recognize that the “meaning/definition” inserted in the
complete sentence after the selected vocabulary word per operations block 46 might be considered to be
a listing of synonyms for the vocabulary word, appellant’s specification appears to distinguish “synonyms”
from “meaning/definition.” Upon return of this application to the Technology Center, the primary examiner
may wish to take appropriate action to clarify whether the term “synonyms” as used in appellant’s
application differs from “meaning/definition” and to consider whether the claimed subject matter finds
written description support in the application as originally filed, as required under the first paragraph of 35
U.S.C. § 112.
3 With further regard to our observations in footnote 2, Sorensen’s separate references to “the
word with definitions” and “the word with synonyms” suggests that the terms “definitions” and “synonyms”
are viewed differently within the field of teaching vocabulary.
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