Appeal No. 2005-1431
Application 09/442,070
The data structure 601 contains "a class identifier 603, handle 604 to the storage for the object,
and data 605 for tracking the state of the object." '701 patent, col. 9, l. 58 to col. 10, l. 3. The
examiner responds to appellants' position as follows:
A careful review of the specification fails to reveal any teaching related to the claimed
limitation "an embedded [sic] text format". The data structure 601 of pointers, class ID,
and handles is certainly not an embedded text format as argued by the appellants. More
certainly, [it] is not an "embedded text format" which [is] "located at a first location in
said first distributed hypermedia document," and which "specifies the location of at least
a portion of an object external to the first distributed hypermedia document" embodied in
a "network environment" of claim 40 or similar recitation in claim 50 ([illegible] client
workstation coupled to a computer environment, the client workstation executes
[illegible] browser application that parses a hypermedia document to identify text format,
etc...).
Answer at 17. The examiner's position is not persuasive. His assertion that "[t]he data structure
601 of pointers, class ID, and handles is certainly not an embedded text format as argued by the
appellants" (emphasis omitted) is not supported by any definition of "embed text format" which
would preclude appellants' reliance on handle 604. The mere fact that the '701 patent does not
employ the term "embed text format" is insufficient to establish a lack of descriptive support.
See Cordis, 339 F.3d at 1364, 67 USPQ2d at 1885 ("The disclosure as originally filed does not,
however, have to provide in haec verba support for the claimed subject matter at issue.") (citing
Fujikawa v. Wattanasin, 93 F.3d 1559, 1570, 39 USPQ2d 1895, 1904 (Fed. Cir. 1996)). The
remainder of the examiner's response appears to be based on the "distributed hypermedia
document," "computer environment," and "client workstation" limitations discussed above rather
than specifically on an interpretation of the "embed text format" limitation. The examiner
therefore has not established that handle 604 fails to provide descriptive support for the recited
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