Appeal No. 2006-1595
Application No. 09/798,484
contends that the specification does not describe (1) what constitutes a first or
second configuration of the source code function library, and (2) what procedure
or algorithm specifies or selects the first or second configuration of the library as
claimed [id.].
Appellants note that the specification was previously amended to
incorporate the entire text of claims 1-23 and therefore adequately conveys to the
skilled artisan that appellants had possession of the invention at the time of filing
[brief, page 3]. Appellants also argue that the examiner’s allegation that the
claims recite mere “form over substance” with no tangible result is irrelevant to
the proper inquiry under 35 U.S.C. § 112, first paragraph [reply brief, pages 2
and 3]. Additionally, appellants note that the examiner failed to recognize or
account for knowledge possessed by a person skilled in the art [reply brief, page
3]. Appellants further note that the examiner’s position regarding the disclosure’s
inadequate written description is inconsistent with the examiner’s obviousness
rejections [reply brief, pages 2 and 3]. Finally, appellants argue that skilled
artisans would understand what a hierarchical path means in context of a Verilog
model as evidenced by numerous cited articles and internet links [reply brief,
page 4]. The examiner responds that the specification did not refer to such
articles nor were they incorporated by reference [answer, page 28].
We will not sustain the examiner’s rejection under 35 U.S.C. § 112, first
paragraph. At the outset, we note that written description issues under § 112
typically arise when a question exists whether the specification as originally filed
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