Appeal No. 2005-1431
Application 09/442,070
automatically retrieved (if linked) and automatically displayed as part of the compound
document (see Fig. 3) when the document is opened by Word.
The '701 patent therefore fails to provide § 112, first paragraph, written description
support for the terms "hypermedia environment" and "hypermedia document" in independent
claims 40, 45, and 50. Those claims are therefore rejected on that ground, as are dependent
claims 41-44 and 46-49.
L. Summary
The examiner's rejection of claims 40-50 under the written description requirement of
35 U.S.C. § 112, first paragraph, is affirmed, as are (a) the objection to the specification under
37 CFR § 1.75(d)(1) and (b) the objection to the proposed new drawing figures and to the
specification to the extent it has been amended to include text (other than the menu group
interleaving guidelines) from Chapters 5 and 9 of the Windows Interface document as
constituting new matter under 35 U.S.C. § 251.
The rejection of claims 40-50 under the enablement requirement of § 112, first paragraph,
is reversed.
We have entered a new ground of rejection of claims 40-50 under the written description
requirement of 35 U.S.C. § 112, first paragraph.
M. Appellants' options in light of the new ground of rejection
37 CFR § 41.50(b) explains:
(b) . . . A new ground of rejection pursuant to this paragraph shall
not be considered final for judicial review. When the Board makes a new
ground of rejection, the appellant, within two months from the date of the
56
Page: Previous 45 46 47 48 49 50 51 52 53 54 55 56 57 58 59 Next
Last modified: November 3, 2007