Appeal No. 2004-1827 Page 9
Application No. 09/467,396
customer in a customer specification.” We find the examiner’s
assertion (answer, pages 9 and 10) of what would have been
obvious to one of ordinary skill in the art to be unsupported by
evidence in the record.
From all of the above, we find that the examiner has failed
to establish a case of prima facie obviousness of claim 1.
Accordingly, the rejection of claim 1 under 35 U.S.C. § 103(a) is
reversed. As claims 2-9 are dependent on claim 1, the rejections
of claims 2-9 are reversed. Because independent claims 10 and 19
also recite “pre-existing source code that includes inserted
customer specific messages provided by the customer in the
customer specification,” the rejection of claims 10 and 19, and
claims 11-18 and 20, dependent therefrom, is reversed.
NEW GROUND OF REJECTION
In addition to affirming the examiner's rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 41.50(b).
Claims 1-4, 6-13, and 15-20 are rejected under 35 U.S.C.
§ 112, second paragraph, as being misdescriptive, and therefore
vague and indefinite. Claims are considered to be definite, as
required by the second paragraph of 35 U.S.C. § 112, when they
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