Appeal No. 2004-0214 Page 9
Application No. 09/446,516
ordinary skill in the art. See Mehl/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365,
52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir. 1999).
Claims 1, 21, 34 and 35, the only independent claims on appeal, clearly recite
that the CRITERIA file as claimed is distinct from the COUPON-TYPE file as claimed.
In treating this limitation, the examiner (revised answer, p. 5) admitted that this limitation
was not explicitly taught by Deaton. The examiner then presumed that this limitation to
be inherent in Deaton since the structure recited in Deaton is substantially identical to
that claimed.
In our view, Deaton does not necessarily include a CRITERIA file as claimed
which is distinct from a COUPON-TYPE file as claimed. In the regard, the mere fact
that Deaton utilizes the same data contained in the claimed CRITERIA and COUPON-
TYPE files does not establish that distinct CRITERIA and COUPON-TYPE files must
exist. Accordingly, Deaton does not function in accordance with, or include, all the
claimed limitations and does not anticipate independent claims 1, 21, 34 and 35 or
claims 2 to 12, 15 to 17, 20 and 22 to 32 dependent thereon.
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