Appeal 2007-1979
Application 10/041,141
The Examiner’s articulated reasoning in the rejection must possess a
rational underpinning to support the legal conclusion of obviousness. In re
Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
The claims on appeal should not be confined to specific embodiments
described in the specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323,
75 USPQ2d 1321, 1334 (Fed. Cir. 2005) (en banc). During ex parte
prosecution, claims must be interpreted as broadly as their terms reasonably
allow since Applicants have the power during the administrative process to
amend the claims to avoid the prior art. In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989).
ANALYSIS
In view of the 200-page length of the ‘901 provisional application, we
find that it was reasonable for the Examiner to rely on the seven pages in the
rejection.
Appellants argue that Upton neither teaches nor would have suggested
to the skilled artisan the selection of an error text corresponding to a
validation error (Br. 5 to 7; Reply Br. 1 to 3). The Examiner contends that
an error text message may take many forms, and still “correspond to the
validation error” (Ans. 10). For example, “even if the error text message
was always ‘Error’ (as read by Appellant), such text message by Upton’s
would still be selected/retrieved corresponding to the validation of the field
(the ‘901, page 8-3, steps 2 and 3, for example age field has invalid value) in
the form in order to display such text message next to erroneous field (age
field has invalid value) on the form” (Ans. 10).
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Last modified: September 9, 2013