Appeal No. 2005-1431
Application 09/442,070
under 35 U.S.C. § 251 for containing new matter and the specification stands objected under
37 CFR § 1.75(d)(1) for failing to provide clear support or antecedent basis for some of the terms
in claims 40-50. Claims 1-39 have been allowed. We affirm.
In addition, we are entering a new ground of rejection under § 112, first paragraph, for
lack of written description support for the terms "hypermedia environment" and "hypermedia
document."
A. Related proceedings
The reissue application was filed with claims 1-49, of which claims 1-39 are the
unamended claims of original Patent 5,801,701 (hereinafter "'701 patent" or "appellants' patent"),
for which reissue is sought.4 Claims 40-49 as filed were exact copies of claims 1-10,
respectively, of Doyle et al. (Doyle) Patent 5,838,906,5 which were copied for the purpose of
provoking an interference with that patent.6 The Doyle patent is the basis for an infringement
action brought in the U.S. District Court for the Northern District of Illinois by The Regents of
the University of California and its exclusive licensee, Eolas Technologies, Inc. (hereinafter
4 Reissue claim 50 was added later.
5 Issued November 17, 1998, based on an application filed October 17, 1994.
6 Generally speaking, it is not necessary for an applicant to copy claims to institute an
interference with a patent. An interference will be appropriate if the application and the patent
include claims which recite "interfering subject matter." See 37 CFR § 41.203(a) (2006)
("Interfering subject matter. An interference exists if the subject matter of a claim of one party
would, if prior art, have anticipated or rendered obvious the subject matter of a claim of the
opposing party and vice versa.").
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