Appeal 2007-0518
Application 90/006,969
Piasecki, 745 F.2d 1468, 1472, 223 USPQ, 785, 788, (Fed. Cir. 1984). In
order to demonstrate that a claim term lacks written description support, the
burden is initially on the Examiner to demonstrate that the inventor did not
have possession of the claimed invention.
The Examiner argued that there is not a clear picture of the intended
metes and bounds of the electronic collection of tax data wherein the tax
data collected electronically is not collected manually or manually entered
onto said electronic tax return as recited in claims 31-33, 39 and 40 (FF
7(1)). The Examiner acknowledges that portion of the Specification that
describes this feature, yet fails to explain why that description fails to
convey to one of ordinary skill in the art that the inventor had possession of
the claimed feature. For example, the Specification states that “the invention
eliminates the current requirement that a taxpayer manually collect the tax
data, eliminates the current requirement that a taxpayer manually enter such
tax data onto a tax return or into a computer…” (FF 10). That description is
very similar to the claim language that the Examiner argues does not have
written description support. Yet, the Examiner has failed to clearly
articulate why the passage does not support the claim language.
The Examiner also argued that the Specification does not render a
clear picture of the metes and bounds of the automatic and electronic
collection of tax data. Again, the Examiner has failed to articulate in any
meaningful way why the description discussed immediately above or that the
Specification as a whole fails to convey to one of ordinary skill in the art that
the inventor had possession of the claimed feature. For example, the
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