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 thePage: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007