Appeal No. 2005-1431
Application 09/442,070
The examiner's May 14, 2002, Office action,21 which was not made final, repeated (a) the
objection to the addition of some of the text from Chapter 5 and all of the text from Chapter 9 of
the Windows Interface document for containing new matter, (b) the refusal to enter the proposed
new drawings, and (c) the rejection under § 112, first paragraph, for lack of descriptive support.
In addition, the examiner added a new objection to the specification for failing to provide proper
antecedent bases for the claim terms at issue, citing MPEP § 608.01(o) and 37 CFR
§ 1.175(d)(1). Paper No. 33, at 4. As support for the proposition that an incorporation by
reference is effective only with respect to specifically identified subject matter, he cited only
Saunders and Raible. Paper No. 33, at 8-10. In addition, he added a new ground of rejection of
claims 40-49 under § 112, first paragraph, for a lack of enablement. Id. at 6-7.
Appellants' August 19, 2002, Amendment C22 added a new claim 50 modeled on claim
40 but omitting the "network" terminology.
In a November 14, 2002, decision entitled "On Petition,"23 the Deputy Commissioner for
Patent Examination Policy denied a May 7, 2002, petition by appellants to direct the Director of
Technology Center 2100 to review the merits of the examiner's objection to the specification and
proposed drawings for containing new matter.
21 Paper No. 33.
22 Paper No. 37.
23 Paper No. 35.
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