Appeal No. 2005-1431
Application 09/442,070
known in the art) that a person skilled in the art, using the claims as a guide42 and having
knowledge of such features, would have required undue experimentation to make and use the
claimed subject matter. If the examiner is of the opinion that undue experimentation would have
been required to implement a particular feature recited in the claims, e.g., using the browser to
parse a hypermedia document for an embed text format, the rejection should specifically identify
the feature and explain why undue experimentation would have been required.
The rejection of claims 40-50 under the enablement requirement of 35 U.S.C. § 112, first
paragraph is therefore reversed as to all claims.
I. The objections
In view of our affirmance of the rejection of claims 40-50 under 35 U.S.C. § 112, first
paragraph for lack of written description support, we are also affirming the new matter objection
under 35 U.S.C. § 251 to extent it is directed to (a) all of the text and drawings from Chapter 9 of
the Windows Interface document and (b) all of the text and drawings from Chapter 5 of the
Windows Interface document except for the material which relates to the order of interleaving of
menu groups. We also affirm the objection to the specification under 37 CFR § 1.75(d)(1) to the
extent it is directed to the "network," "client workstation," and "distributed hypermedia"
limitations recited in claims 40-50.
42 For the purpose of evaluating a rejection for lack of enablement, the rejected claims
are presumed to have written description support.
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