Appeal No. 2002-1598 Page 4
Application No. 09/596,975
This rejection is based upon the examiner’s conclusion that the term
“automatically,” which was added to the claim during prosecution, constitutes new
matter, and therefore the claimed invention was not in the possession of the appellant
when the application was filed (Paper No. 6, page 2). The appellant argues in
response that this is not the case, for “automatically” appears in two places in the
specification as filed. The first is on page 7, where it is stated that the control of the
vehicle “may be implemented by the user, physically or automatically, using software
operating on the control station 24" (lines 21-24), and the second on page 10, where it
is explained that the vehicle may “automatically go around the cones [in a racetrack] in
response to processor-based system control which recognizes the cones and their
locations” (lines 14-16). In response to this assertion in the Brief, the examiner further
states in the Answer that while “automatically” appears in the specification, it does not
provide support for automatically identifying an image element and automatically using
it to control the vehicle, as stated in claim 21.
We find ourselves in agreement with the appellant that the presence of the
disputed term in these two places provides the necessary support for the steps of claim
21. Specifically, it is explained on page 7 that the camera in the vehicle recognizes
patterns and colors, from which the system can control the car manually or
automatically, and on page 10 that it recognizes cones on a racetrack and controls the
car to go around them. These instances clearly provide support for the two steps of the
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