Appeal 2007-1992
Application 09/318,447
terms that would reasonably convey to those of ordinary skill that Appellants
had possession of the claimed subject matter at the time the application was
filed. We recognize that the Specification discloses, for instance, that “[t]he
server system may require the purchases [sic] to “login” so that the identify
[sic] of the purchaser can be verified before the single-action ordering is
enabled” (Specification, p. 8:17-19, emphasis added). But the Examiner
should keep in mind that “[a] description which renders obvious the
invention for which an earlier filing date is sought is not sufficient. … It is
not sufficient for purposes of the written description requirement of Section
112 that the disclosure, when combined with the knowledge in the art, would
lead one to speculate as to modifications that the inventor might have
envisioned, but failed to disclose.” Lockwood v. American Airlines, Inc. ,
107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
Obviousness
The second issue is the level of skill in the art at the time the
application was filed.
In resolving the question of obviousness of the claimed subject matter
over the prior art, the Examiner did not address the Graham factual inquiry
into the level of skill in the art. During ex parte prosecution, this is not
normally an issue that requires much attention since “the absence of specific
findings on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need for
testimony is not shown.’” Okajima v. Bourdeau, 261 F.3d 1350, 1355, 59
USPQ2d 1795, 1797 (Fed. Cir. 2001). But in this case the Examiner reached
conclusions of obviousness that necessitate factual findings relative the level
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