Claims 17-20 have been rejected under the first paragraph of 35 U.S.C. § 112 for allegedly failing to comply with the written description requirement. Specifically, the Action contends that Applicant’s disclosure does not sufficiently describe the limitation of a “computer-readable medium” of amended claims 17-20. This contention is respectfully traversed. Video arrays, various types of ….etc.
As the Office Action notes, independent claim 17 recites a computer readable medium. Applicant submits that one of ordinary skill in the art would reasonably conclude that Applicant’s disclosure adequately described the claimed invention at the time of filing at least because:
(1) the feature of a computer readable medium is at least impliedly taught by the present application as it was originally filed; and
(2) art to which the disputed limitation belongs (basic computer configurations) is mature and the predictable nature of the art mandates a generally lower showing of possession.
A review of the present application reveals that Applicant describes a user interface for use with a video on demand system. [See Specification, e.g., page 5, line 25 to page 6, line 3, Fig. 3 at 56.] This interface is stored as instructions within RAM memory. [Id. Also see Specification, e.g., page 4, lines 23-28 for further discussion of the RAM memory.] Other computer readable media are also mentioned; e.g., non-volatile memory [e.g., block 42 in Fig. 2] including ROM, EPROM, flash memory, and magnetic disk storage [Specification, page 4 lines 25-28].
Those of ordinary skill in the art would understand that such a disclosure at least implies (and arguably expressly describes) that such a RAM memory is a computer-readable medium. Further, one of ordinary skill in the art would recognize that such computer instructions would be stored internally in non-volatile memory, and can also be stored on other computer-readable media, such as removable disks, CD-ROMs, or any other medium which can be used to store information.
In view of the foregoing, Applicant respectfully submits that ordinarily skilled artisans would reasonably conclude that Applicant possessed the claimed language on the basis of the aforementioned at least implicit descriptions. Applicant further submits that this conclusion is buttressed by the maturity and predictability of the art and because an adequate disclosure need not be express or even implied. Thus, the present application adequately describes the claimed invention.
Applicant thus respectfully requests favorable reconsideration and withdrawal of the rejection under 35 U.S.C. § 112.
In the event that the Office maintains this rejection, Applicant respectfully requests, in the interest of its policy of compact prosecution, that the Office explain how the aforementioned portions of the present application fail to communicate to a skilled artisan that Applicant possessed the claimed invention.