Appeal No. 2005-1431
Application 09/442,070
Appellants responded with "Amendment A,"15 which deleted the definitions inserted by
the preliminary amendment and inserted in their place the textual information from Chapters 5
and 9 of the Windows Interface document, which appellants asserted is incorporated by
reference in its entirety by the following passage in the '701 patent. Amendment A at 3.
Appellants also deleted proposed new drawing Figures 57 and 58 and submitted new proposed
drawing Figures 57-91, described as copies of the drawings in Chapters 5 and 9 of the Windows
Interface document.
In an Office action mailed September 10, 2001,16 which was the first of two final Office
actions, the examiner (a) refused entry of all of proposed new drawing Figures 57-91 and
objected to the amendment of the specification for containing new matter in violation of
35 U.S.C. § 251 and (b) repeated the § 112 written description support rejection. Specifically,
the examiner held that the only material incorporated by reference from the Windows Interface
document by the '701 patent and thus properly added to the reissue application is the Chapter 5
material which relates to the order of the menu items. Paper No. 21, at 6. As support for
restricting the incorporation by reference to that material, the examiner cited MPEP § 608.01(p),
In re de Seversky, 474 F.2d 671, 674, 177 USPQ 144, 146 (CCPA 1967), and Advanced Display
Systems, Inc. v. Kent State University, 212 F.3d 1272, 54 USPQ2d 1673 (Fed. Cir. 2000), which
he characterized as holding that an incorporation by reference of a document is effective only to
15 Paper No. 20.
16 Paper No. 21.
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