Appeal 2007-0647
Application 10/421,366
Claims 9 and 11-13
We consider next the Examiner’s rejection of dependent claims 9 and
11-13 as being unpatentable over the teachings of August in view of Bigus.
Appellants argue that the combination of August and Bigus does not
overcome the deficiencies of August (App. Br. 10). Specifically, Appellants
contend that Bigus does not teach “the merchant station adapted to provide
an order selection menu to the wireless communication devices to facilitate a
transaction, the order selection menu comprising a text description and an
image associated with at least one item on the order selection menu,” as
recited in independent claim 1 (Id.). Appellants point out that the Examiner
has acknowledged in the Final Office Action (p. 4) that August does not
teach these limitations (Id.).
In response, the Examiner states that the limitations argued by
Appellants are not recited in the rejected claims (i.e., claims 9 and 11-13)
(Answer 14).
After carefully considering the evidence before us, we note that the
limitations argued by Appellants are explicitly recited within independent
claim 1 (from which claims 9 and 11-13 indirectly depend). We note that
“[a] claim in dependent form shall be construed to incorporate by reference
all the limitations of the claim to which it refers.” (See 35 U.S.C. § 112,
fourth paragraph). Here, we again find the Examiner has erred because the
Examiner has previously acknowledged that August does not teach the
limitations argued by Appellants (See Answer 4 where the Examiner relies
on DiPietro for teaching the merchant station and associated limitations). In
the rejection of dependent claims 9 and 11-13, the Examiner merely relies on
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