Ex Parte Rocha et al - Page 15

                Appeal 2007-1992                                                                               
                Application 09/318,447                                                                         

                      E. Conclusion of Law                                                                     
                      The Examiner has not established a prima facie case of obviousness-                      
                type double patenting of the claims over the claims of Hartman in view of                      
                Hafner.                                                                                        

                The obviousness rejections                                                                     
                      The record is not now in a condition for a meaningful review of these                    
                rejections. Accordingly, we will not treat these rejections on the merits but                  
                instead remand the application to the Examiner so that the Examiner may                        
                address the issues we detail below.                                                            

                                                 REMAND                                                        
                      There are two issues the Examiner should address upon remand of the                      
                application.                                                                                   

                Written Description                                                                            
                      The first issue is whether the claims satisfy the written description                    
                requirement of 35 U.S.C. §112.                                                                 
                      We note that claims 108, 151, and 176 provide that the user does not                     
                need to log in to the computer to order an item and that claim 126 provides                    
                that the server computer automatically combines orders into a single order.                    
                      Our review of the prosecution history reveals the following facts. The                   
                application on appeal (09/318,447, filed 5/25/99) was filed with 48 claims.                    
                On 8/27/99, an amendment was filed canceling claims 1-48 and adding                            
                claims 49-107. For the first time, two new limitations were claimed. Claim                     
                63 called for “the provided web page includes a request for log on                             

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