Appeal 2007-0700
Application 09/159,509
Patent 5,559,995
C. § 251 - Appellants’ Response7
(1)
Per Se Rule and Ex Parte Eggert
With respect to independent claims 10-43, 46-55, 58-66, 97-104, and
106-108, Appellants argue that the Board should not impose a per se
recapture rule. We agree. See our discussion at Section IV. A. supra.
Appellants also argue that Ex Parte Eggert, 67 USPQ2d 1716 (BPAI
2003), is controlling. We disagree. See our discussion at Section IV. A. (5)
supra. The rationale of Eggert is not consistent with the rationale of the
Federal Circuit in North American Container and should no longer be
followed or be applicable to proceedings before the USPTO.
(2)
Appellants’ Patentability Arguments in the Original Application
Appellants’ argue at pages 4-5 of the Supplemental Reply Brief, that
the arguments presented in the original application, by Appellants in support
of the amended claims which were allowed, were limited solely to “grouping
representations of virtual objects” into “a group represented by a
three-dimensional object.” We disagree.
Appellants’ argument does not establish that the extensive
amendments and more than 10 pages of remarks in the April 2, 1996
Amendment after Final (the Second Amendment) were so limited. For
7 Appellants’ response is contained in the Brief filed Oct. 9, 2001, Reply
Brief filed June 6, 2002, and Supplemental Reply Brief filed Sept. 7, 2006.
- 44 -
Page: Previous 37 38 39 40 41 42 43 44 45 46 47 48 49 50 51 Next
Last modified: September 9, 2013