Appeal No. 2005-1431
Application 09/442,070
D. The final Office action
The objections and rejections set forth in the previous Office action are repeated as to
claims 40-49 and also entered against new claim 50 in the March 3, 2003, final Office action24
from which this appeal was taken.
In addition to the rejections, the objection for new matter is clearly within our jurisdiction
because it involves the merits of the rejection for lack of written description support. MPEP
§ 608.04(c). Also, the objection under 37 CFR § 1.75(d)(1) has sufficient nexus to the merits of
that rejection to permit its consideration.
E. The grouping of claims
Claims 41-44 depend on independent claim 40, and claims 46-49 depend on independent
claim 45. Independent claim 50 has no dependent claim or claims. Appellants treat claims 40-
49 as standing or falling together for purposes of this appeal (Brief at 11) and of those claims
argue the merits of only claim 40. Claim 50 is argued separately. The examiner likewise limits
his arguments to claims 40 and 50. We will accordingly restrict our discussion to those two
claims.
F. The incorporation by reference issue
The principal question before us is whether language which incorporates by reference a
document per se while discussing the relevance of only a portion thereof is effective with respect
to the entire document or with respect to only the discussed material.
24 Paper No. 41.
(Continued on next page.)
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