Ex Parte Eisen - Page 3

               Appeal 2007-2514                                                                           
               Application 10/034,255                                                                     


               Outlook 97 editing screen dumps, Microsoft Corp., 1996, pp. 1-5.                           
               (Outlook 97)                                                                               
               Outlook 2000 sp-3 copy and paste screen dumps, Microsoft Corp., 1999,                      
               pp. 1-3.  (Outlook 2000)                                                                   
                     Claims 1 through 25 stand rejected under 35 U.S.C. § 112, second                     
               paragraph, as being indefinite.                                                            
                     Claims 1 through 25 stand rejected under 35 U.S.C. § 103 as being                    
               unpatentable over Huang in view of Barnes, Outlook 2000, and Outlook 97.                   
                     We refer to the Examiner's Answer (mailed March 7, 2007) and to                      
               Appellant's Brief (filed November 14, 2006) for the respective arguments.                  

                                      SUMMARY OF DECISION                                                 
                     As a consequence of our review, we will reverse both the                             
               indefiniteness rejection and also the obviousness rejection of claims 1                    
               through 25.                                                                                

                                                OPINION                                                   
                     The Examiner asserts (Answer 3) that claims 1 through 25 are                         
               indefinite because of the language "the list can be" in independent claim 23               
               and "the list is able" in the remaining independent claims.  The Examiner                  
               asserts that "[t]he cited language introduces ambiguity into the claims, since             
               it implies that a step may or may not be carried out."  Appellant contends                 
               (Br. 8-9) that the language in question describes a feature of the list, not a             
               step of the method.  Further, the phrases "have a readily discernable plain                
               meaning, and are described in detail in the Specification" (see Br. 9).  Thus,             

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