Appeal No. 2005-1431
Application 09/442,070
position find support in the commentary to the 1997 Final Rule Notice (Attachment E to brief),
of which appellants' brief (at 21) reproduces only the following text:
Nevertheless, an applicant may incorporate by reference the prior application by
including, in the continuing application-as-filed, a statement that such specifically
enumerated prior application or applications are "hereby incorporated herein by
reference."
1997 Final Rule Notice, Response to Comment 34, 62 Fed. Reg. at 53,146 (1st col.), 1203 Off.
Gaz. Pat. & Trademark Office at 75 (Appendix E, 2d page). This commentary is limited to the
situation in which an application incorporates by reference an earlier application of which it
purports to be a continuation or divisional and thus has no relevance to the incorporation-by-
reference issue presented by this appeal. In any event, as explained above, the effect of
appellants' incorporation by reference must be judged in light of Advanced Display.
Finally, appellants contend that the examiner's objection to the amendment adding
material from the Windows Interface document is inconsistent with his failure to object to the
amendment adding three volumes of material from one of the other documents which is
expressly incorporated by reference. Brief at 23. The examiner's failure to object to those
materials, which appellants do not allege to be cumulative to the material relied on in Chapter 9
(addressed infra), has not been shown to be relevant to the merits of the examiner's objection to
the Chapter 9 material.
Turning now to the scope of appellants' incorporation by reference, as already noted, the
incorporating language reads as follows:
In a preferred embodiment, the container and server application menus are
interleaved in the final composite menu bar, according to the Microsoft
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