Ex Parte KOPPOLU et al - Page 2




               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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