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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