Appeal 2007-0712
Application 90/006,713
Examiner (Final Rejection 38-40 and Answer 32-33).
27. The Examiner rejected dependent claims 11-13 based on Beamer
and further supported by “It’s W-2 Time” as applied in the anticipation
rejection and also based on Meadows and “Electronic Tax Payment Through
TAXLINK Discussed in IRS Procedure.” (Final Rejection 40-42 and
Answer 33-35).
D. Principles of Law
35 U.S.C. § 112, ¶ 1
Adequate written description means that, in the Specification, the
applicant must “convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). The written description requirement
is separate and distinct from the enablement requirement. Id.
35 U.S.C. § 112, ¶ 2
A claim is indefinite if, when read in light of the Specification, it does
not reasonably apprize those skilled in the art of the scope of the invention.
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342, 65
USPQ2d 1385, 1406 (Fed. Cir. 2003). Specifically, if the scope of the
invention sought to be patented cannot be determined from the language of
the claims, the Specification or the teachings of the prior art with a
reasonable degree of certainty, a rejection of the claims under 35 U.S.C.
§ 112, second paragraph is appropriate. In re Wiggins, 488 F.2d 538, 541,
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