Appeal 2007-1517
Application 09/726,973
Rather than repeat the arguments of Appellants or the Examiner, we
make reference to the Briefs, the Final Action, and the Answer for the
respective details thereof.
Written Description Requirement
The Examiner has raised a new ground of rejection for claims 1-18
under 35 U.S.C. § 112, first paragraph (Answer 4). The Examiner contends
the Specification fails to disclose assigning a unique ID to each device
among a plurality of devices used for presenting the personalized
information, in addition to using the assigned unique ID in the manner
claimed (id.). In particular, the Examiner finds the disclosure of paragraphs
[0006], [0009], and [0012] inadequate to support the instant claims (id.).
In response, Appellants contend support can be found in the
Specification at pages 2-4, paragraphs [0007]-[0011] (Reply Br. 4-5).
We note that the Court of Appeals for the Federal Circuit has held that
“[t]o fulfill the written description requirement, the patent specification must
describe an invention in sufficient detail that one skilled in the art can clearly
conclude that the inventor invented what is claimed.” Cordis Corp. v.
Medtronic AVE, Inc., 339 F.3d 1352, 1364, 67 USPQ2d 1876, 1885 (Fed.
Cir. 2003) (citations omitted). Our reviewing court has cautioned, however,
that “[t]he disclosure as originally filed does not . . . have to provide in haec
verba support for the claimed subject matter at issue.” id. at 1364, 67
USPQ2d at 1885. “Although [the applicant] does not have to describe
exactly the subject matter claimed, . . . the description must clearly allow
persons of ordinary skill in the art to recognize that [he or she] invented
what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614,
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