Appeal No. 2005-1431
Application 09/442,070
dependent claims 51-57 in the event we conclude that "client workstation" refers to a network
workstation and lacks written description support. Brief at 41. We are declining appellants'
invitation to make such a recommendation.
3. A "computer environment"
The examiner and appellants appear to agree that the term "computer environment" in
claim 50 is broad enough to encompass a network computer or a stand-alone computer. The
examiner, citing The Gentry Gallery, Inc. v. The Berkline Corp., 134 F.3d 1473, 1479-80,
45 USPQ2d 1498, 1503 (Fed. Cir. 1998), contends that the '701 patent fails to provide written
description support for this broad term because it discloses only a stand-alone computer. Final
Action at 7-8; Answer at 10-11. This argument is unconvincing for several reasons. First, as
explained above, the examiner has correctly construed the term "client workstation" in claim 50
as limited to a network computer. Second, the examiner's reliance on Gentry Gallery is
misplaced even assuming "client workstation" is broad enough to encompass stand-alone and
network workstations. As correctly noted by appellants (Brief at 40), Johnson Worldwide
shall be binding on the examiner in the absence of new references or grounds of
rejection.
The replacement provision, § 41.50(c), reads as follows:
(c) The opinion of the Board may include an explicit statement of
how a claim on appeal may be amended to overcome a specific rejection.
When the opinion of the Board includes such a statement, appellant has
the right to amend in conformity therewith. An amendment in conformity
with such statement will overcome the specific rejection. An examiner
may reject a claim so-amended, provided that the rejection constitutes a
new ground of rejection.
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