Appeal 2007-0712
Application 90/006,713
had possession of automatic and electronic collection of tax data.
The Examiner also found that since the Specification describes that
the invention may be implemented using existing software, such as
TurboTax®, that the demarcation between one off-the-shelf software
program being integrated into another piece of software is not made clear by
the Specification (FF 8). The Examiner’s position is not persuasive. The
Specification states that “step 13 can be implemented using a computer
program similar to the computer programs currently available in the market
place” such as TurboTax® (FF 9). The Specification makes clear that the
software may be similar to what is available in the market place, but need
not be exactly the same software.
In response to Simplification’s arguments, the Examiner apparently
agrees that the Specification does provide written description support for the
electronic transmission of data and software processing using the data, but
argues that the Specification fails to explain in detail how this is
accomplished (FF 15).
Whether one of ordinary skill in the art can make or use a described
invention, e.g., enablement, is a separate and distinct requirement of 35
U.S.C. § 112, ¶ 1. The test for enablement is based on undue
experimentation, where several underlying factual findings need be made.
In re Wands, 858 F.2d 731, 8 USPQ2d 1400. The Examiner has failed to
make any such findings. We need not and will not speculate as to how the
Examiner’s rejections may possibly fit into an enablement scenario. The
Examiner has the initial burden to succinctly articulate a rationale for
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