Ex Parte Peters - Page 4




              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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