Appeal No. 2005-1431
Application 09/442,070
"Programmer's Reference, Volume 3: Messages, Structures, and Macros,"
Microsoft Corp., 1992; and "Guide to Programming," Microsoft Corp., 1992,
which are herein incorporated by reference.
'701 patent, col. 12, lines 23-36 (emphasis added). The examiner has not objected to the addition
of this material to the specification.
In a March 7, 2002, "Decision on Petition"19 the Director of Technology Center 2100
dismissed a petition by appellants requesting a ruling on the effect of the incorporation by
reference provisions in the '701 patent. The Director dismissed the petition with respect to the
Windows Interface document because that question is tied to the rejection for lack of descriptive
support and thus appealable rather than petitionable, citing MPEP § 608.04(c)20 and Ex parte
Raible, 8 USPQ2d 1709 (Bd. Pat. App. & Int. 1988). Decision on Petition at 2. The petition was
dismissed as moot with respect to the other documents because the examiner had not objected to
the amendment adding material from those documents. Id. at 3-4.
19 Paper No. 31.
20 That provision read (and still reads) as follows:
608.04(c) Review of Examiner’s Holding of New Matter
Where the new matter is confined to amendments to the specification,
review of the examiner’s requirement for cancelation is by way of petition. But
where the alleged new matter is introduced into or affects the claims, thus
necessitating their rejection on this ground, the question becomes an appealable
one, and should not be considered on petition even though that new matter has
been introduced into the specification also. 37 CFR 1.181 and 37 CFR 1.191
afford the explanation of this seemingly inconsistent practice as affecting new
matter in the specification.
MPEP § 608.04(c) (8th ed., Aug 2001).
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