Ex Parte Sesek et al - Page 3

                Appeal 2007-2081                                                                                  
                Application 09/859,856                                                                            

                                         SUMMARY OF DECISION                                                      
                       As a consequence of our review, we will reverse both the                                   
                indefiniteness rejection of claims 1, 7, 12, and 18 and also the anticipation                     
                rejection of claims 1 through 9 and 11 through 34.                                                

                                                   OPINION                                                        
                       The Examiner asserts (Answer 3) that the word "that" in each of                            
                independent claims 1, 7, 12, and 18 lacks antecedent basis.  Appellants                           
                contend (Br. 15-16) that the phrase "each device," prior to the word "that" in                    
                the claims provides sufficient antecedent basis.  The first issue, therefore, is                  
                whether there is antecedent basis for the word "that" in each of claims 1, 7,                     
                12, and 18.                                                                                       
                       Claim 1, in pertinent part, recites "the configuration logic for each                      
                device including information … for configuring that device."  For any given                       
                device, the configuration logic includes information for configuring the                          
                given device.  Thus, we agree with Appellants that the word "that" refers to                      
                "each device."  Consequently, we will not sustain the rejection of claims 1,                      
                7, 12, and 18 under 35 U.S.C. § 112, second paragraph.                                            
                       The Examiner (Answer 3-8) further rejects claims 1 through 9 and 11                        
                through 34 as anticipated by Adolfsson.  The Examiner asserts (Answer 9)                          
                that Adolfsson's NEIOD (the element that the Examiner correlates with the                         
                claimed primary device) "collects configuration logic for itself by creating                      
                table 3214.  The table is created by searching for data providing means                           
                (secondary devices) that the NEIOD is handling or are connected to."  The                         
                Examiner continues (Answer 9) that "the data on the table is information                          
                used to generate a user interface for configuring a network device," the                          

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