Appeal No. 1999-0890
Application 07/575,096
to make specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
1614, 1617-19 (Fed. Cir. 1999).
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523,
1529 (Fed. Cir. 1998).
Turning first to Appellants' claim 17, we note that the
Examiner admits that sections (e) and (g) are not disclosed by
Dunkley. As to section (g) the Examiner asserts that it is a
well known fact in computer science education and training, as
well as database design and usage, that the practice of repeating
information which never changes is unnecessary, and this also
applies to repeated information that is transmitted to remote
databases. Based thereon, the Examiner found it obvious to one
of ordinary skill in this art to communicate the combined
business form and signature information to a storage medium for
later retrieval. This is not well taken.
The premise that as a general rule one skilled in the
computer science art would not repeat information which is
repetitive is contrary to general practice. With relatively
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