Appeal No. 2005-1431
Application 09/442,070
the extent the incorporating language includes a specific identification of the material being
incorporated by reference from the document. Paper No. 21, at 5-6. He then held that
the applicants' incorporation by reference statement clearly directs to the
arrangement of menus, i.e., where[] menus appear in a menu bar, not the
menus themselves or the functions of the menus. Therefore only the
teaching of menus arrangement style in the document is incorporated into
the specification.
Id. at 8. The incorporated material to which the examiner refers appears in Chapter 5 but not
Chapter 9 of the Windows Interface document.
The foregoing objections and rejection for lack of written description support for claims
40-49 were adhered to in an October 19, 2001, supplemental final Office action,17 which cited In
re Saunders, 444 F.2d 599, 602-03, 170 USPQ 213, 216-17 (CCPA 1971) as additional support
for restricting the incorporation by reference to the specifically identified subject matter.
Appellants' January 16, 2002, response18 to the supplemental final Office action further
amended the specification by adding text from three documents that are the subject of the
following incorporation-by-reference passage in the '701 patent:
In a preferred embodiment, the in-place interaction API is implemented
using the capabilities of the underlying window system. The present invention is
described assuming the underlying window system is similar to the Microsoft
Windows 3.1 operating system ("Windows"), although one skilled in the art will
appreciate that the present invention can be implemented in a different underlying
window system. The Microsoft Windows 3.1 operating system is described in
"Programmer's Reference, Volume 2: Functions," Microsoft Corp., 1992;
17 Paper No. 23.
18 Paper No. 25.
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