Appeal No. 2002-2112
Application No. 08/949,534
invention should be limited to the daughterboard, as opposed to the
now claimed combination of the daughterboard and a sound card.
Inasmuch as appellant’s disclosed and claimed invention is
expressly directed to the combination of a sound card and a
daughterboard, we disagree with the examiner’s premise that
appellant must claim that which the examiner deems to be
appellant’s invention. In other words, appellant has the right to
claim that which he regards as his invention5. With respect to the
examiner’s insistence (answer, pages 6 and 7) that the appellant
recite more functions of the components, and how they “functionally
coact with each other such that meaningful results can be
achieved,” we find that this demand by the examiner is equally
without merit since appellant has the right to claim his invention
in as broad terms as the disclosure and the prior art will allow
without reciting all of the functional coaction between the
components as requested by the examiner. Thus, the indefiniteness
rejection of all of the claims on appeal is reversed because “[i]n
light of Appellant’s Specification, one of ordinary skill in the
art would understand that a daughter board, such as one containing
5 Being mindful of the written description portion of the
first paragraph of 35 U.S.C. § 112.
5
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