Appeal No. 2002-0098
Application No. 09/064,290
and the lower level of predictability expected in chemical reactions and physiological
activity).
We have carefully considered the examiner’s concerns as set forth in the
Answer. However, we conclude that appellants’ arguments set out at pages 13 through
21 of the Brief convincingly demonstrate that the examiner has not met the initial
burden in showing that undue experimentation would be required.
We find at least two “specific embodiments” described by the disclosure. The
drawings and the written description at pages 15 to 20 describe one embodiment that
manipulates binary bits on an electronic payment device (EPD), which may be in the
form of a telephone payment card (further in view of the background of the invention
described at pages 3 through 5 of the specification). A second embodiment using a
“tag map sort specifier” is described at page 20, line 6 et seq. of the written description.
See In re Gay at 774, 135 USPQ at 316 (observing that “specific” is a somewhat
indefinite term of degree and it is not necessary that an applicant be more specific than
is required by the written description and enablement portions of section 112).
A description of the details of implementing the invention is not required if the
artisan would know how to do so, using equipment and techniques within the level of
skill in the art. Cf. Northern Telecom, Inc. v. Datapoint Corp., 908 F.2d 931, 941, 15
USPQ2d 1321, 1329 (Fed. Cir 1990) (“The claimed invention...is not in the details of the
program writing, but in the apparatus and method whose patentability is based on the
claimed combination of components or steps.”) Although the precise means and
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