Appeal 2007-1992
Application 09/318,447
• “The algorithm then combines all the filled sibling orders into a
single combined order” P. 13:15-16.
Accordingly, the Specification does not disclose providing that the user does
not need to log in to the computer to order an item or providing that the
server computer automatically combines orders into a single order as now
claimed in claims 108, 151, and 176, and 126, respectively.
Given that neither the original claims nor the Specification
disclose providing that the user does not need to log in to the computer to
order an item or providing that the server computer automatically combines
orders into a single order as now claimed in claims 108, 151, and 176, and
126, respectively, a question of patentability of the claims on appeal under
the written description requirement of 35 U.S.C. §112, first paragraph is
raised. Accordingly, we remand the application to the Examiner to consider
whether the Specification conveys with reasonable clarity to those skilled in
the art that, as of the filing date sought, Appellants were in possession of the
invention as it is claimed; i.e., providing that the user does not need to log in
to the computer to order an item (claims 108, 151, and 176) and providing
that the server computer automatically combines orders into a single order
(claim 126). See Vas- Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 111, 117 (Fed.Cir. 1991). If not, the Examiner should reject the
claims on appeal under 35 U.S.C. 112, first paragraph on the ground that the
Specification fails to provide written descriptive support for the later-
claimed subject matter (i.e., a new matter rejection).
We recognize that the Specification need not describe the claimed
subject matter in ipssis verbis. But it appears here that, though the claimed
subject matter is not explicitly disclosed, it is nevertheless not described in
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