Appeal No. 2005-1431
Application 09/442,070
application user interface style guidelines, which is specified in "The Windows
Interface: An Application Design Guide," Microsoft Corp., 1992, which is herein
incorporated by reference. Specifically, in the composite menu bar 1003, the
groups are arranged left to right in the following order: File, Edit, Container,
Object, Window, and Help.
'701 patent, col. 12, ll. 50-21. We agree with the examiner that the only material this passage
incorporates by reference from the Windows Interface document is the material in Chapter 5
("Menus") that relates to the order of interleaving of the menu groups in the composite menu bar.
For example, page 88 explains that "On the menu bar, generally File appears first, followed by
Edit (if supported). Help is generally the last menu on the bar," while page 97 explains that the
Window menu "should be the last menu before Help."
As a result, the remainder of Chapter 5 and all of Chapter 9 ("Object Linking and
Embedding") constitute new matter to the extent they add anything to the disclosure of the
original patent (including the menu group interleaving guidelines from the Windows Interface
document) and thus cannot be relied on to provide written description support for any of
claims 40-50.
G. The merits of the rejection based on the written description
requirement of 35 U.S.C. § 112, first paragraph
As explained in Reiffin v. Microsoft, 214 F.3d 1342, 1346, 54 USPQ2d 1915, 1917 (Fed.
Cir. 2000), written description support can be either express or inherent:
Compliance of the '603 and '604 patents with the written description
requirement requires that the specifications of these patents describe the
inventions claimed in these patents. Thus, for example, the 1990 application
considered as a whole must convey to one of ordinary skill in the art, either
explicitly or inherently, that Mr. Reiffin invented the subject matter claimed in the
'603 patent. See Vas-Cath [Inc. v. Mahurkar], 935 F.2d [1555,] 1563, 19
37
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