Appeal No. 2006-2458
Application No. 10/147,673
that silence within the specification fails to provide the requisite written
support for a negative limitation in the claim, even when the void is skillfully
buttressed by appellant’s speculation and conclusory statements. We further
find that silence fails to satisfy the statutory requirement of a written
description that must provide support for every element of the claim not
otherwise already known and available to the experienced public. Therefore,
we conclude that the requisite written description support is missing from
the specification for the instant claimed negative limitation of “without
setting values for entities that were not presented to the user while
interacting with the user” [claim 1]. Accordingly, we will sustain the
examiner’s rejection of claims 1-14 for failing to satisfy the written
description requirement of 35 U.S.C. § 112, first paragraph.
As per independent claim 15: (§ 112, first paragraph rejection)
Appellant notes that claim 15 includes the limitations of “receiving an
indication that a user wants to exclude an item from consideration without
receiving an indication that a user has selected an item” [brief, page 4].
Appellant points again to the example in the instant specification at page 22,
line 33 through page 23, line 6 as allegedly showing receiving an indication
that a user wants to exclude an item (e.g., the user says “no”) without
receiving an indication that a user has selected an item [brief, page 5].
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007