Appeal 2007-1499
Application 10/122,095
Clarification of rejection of claims 1-31 under
35 U.S.C. § 112, first paragraph
Claims 1-31 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Specifically, the
Examiner asserts that Appellants lack support in the Specification for the
claim limitation added by amendment, “wherein the mobile wireless device
is updated in a manner that is coordinated with a plurality of other mobile
wireless devices for maintaining the performance of the wireless network.”
Appellants assert that support for the limitation may be found, inter
alia, in Application No. 10/121,087. The instant application is a
continuation of that application, and Appellants incorporated the parent
application by reference in its entirety (Specification 1). The Examiner did
not contest the presence of the material in the parent application, nor the
propriety of Appellants’ incorporation of the material by reference. Rather,
the Examiner “notes that this statement fails to appear anywhere in the
instant application,” so that “[t]hus, it is clearly seen that claims 1-31 contain
subject matter that was not described in the instant specification in such a
way as to reasonably convey to one skilled in the relevant art that Appellant,
at the time the application was filed, had possession of the claimed
invention” (Examiner’s Answer 18, emphasis original).
The Examiner is hereby requested to state the legal basis for his
position that, notwithstanding Appellants’ proper incorporation of essential
material by reference, the material at issue must nevertheless be
affirmatively present within the instant Specification.
2
Page: Previous 1 2 3 4 Next
Last modified: September 9, 2013