Ex Parte Wang - Page 6



             Appeal No.  2006-2458                                                                          
             Application No. 10/147,673                                                                     


             page 4, emphasis added].  Appellant asserts that the example does not set                      
             anti-entity values for entities that were not presented to the user [id.,                      
             emphasis added].  Appellant concludes that the example shows that                              
             appellant had possession of the instant invention at the time of filing, noting                
             that if the example is practiced as described, the public would perform the                    
             elements of claim 1 [id.].                                                                     






                   The examiner responds that the specification does not provide support                    
             for the determining how the dialog system interacts with the user, and does                    
             not state that other anti-entity values are not set [answer, page 11].                         


                   The examiner points out, as an example, that altering the anti-entity                    
             value of one word may affect the priorities of other words in the list [id.].                  
             The examiner concludes that the instant specification fails to provide support                 
             for the limitation: “without setting values for entities that were not                         
             presented” [answer, page 11, cont’d page 12; see also claim 1].                                


                   We begin by noting that section 112, paragraph 1, of the Patent Act                      
             states that the “specification shall contain a written description of the                      


                                                     6                                                      



Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007