Appeal 2007-0493
Application 10/289,967
Patent 6,144,380
1977). Appellants cannot now rely on the reissue statute, in order to undo
the consequences of their attorney’s deliberate choice. In re Serenkin, 479
F.3d 1359, 1365, 81 USPQ2d 2011, 2014 (Fed. Cir. 2007).
B. 35 U.S.C. § 112, first paragraph
Using our authority under 37 C.F.R. § 41.50(b), we reject reissue
claims 5-15, 17-37, 39-59, 61-85, and 87-101 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the
Specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention.
As discussed above, the claims are directed to a computer that
identifies input as search strings which means that it is not the user
identifying the input as a search string and telling the computer. Appellants’
Specification does not include the now claimed “recognizing said user input
as one or more search strings” and analogous claim limitations.
C. 37 C.F.R. § 41.50(b)
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
- 54 -
Page: Previous 47 48 49 50 51 52 53 54 55 56 57 58 59 60 61 Next
Last modified: September 9, 2013