Appeal 2007-0647
Application 10/421,366
independent claim 37 (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., claim 29 and 42)
(Answer 14).
After carefully considering the evidence before us, we note that the
limitations argued by Appellants are explicitly recited within independent
claim 20 (from which claim 29 depends), and are recited in equivalent form
within independent claim 37 (from which claim 42 depends). 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 order selection menu and associated
limitations). In the rejection of dependent claims 29 and 42, the Examiner
merely relies on Camaisa for teaching audio and video clips associated with
menu items (See Answer 10). Therefore, we reverse the Examiner’s
rejection of claims 29 and 42 as being unpatentable over the teachings of
August in view of Camaisa because Appellants have shown the Examiner’s
proffered combination fails to teach all the limitations subsumed in
dependent claims 29 and 42 by virtue of their dependency upon independent
claims 20 and 37, respectively.
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