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,
3
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