Appeal No. 2004-0344
Application No. 09/759,016
It is our view that the claimed invention is a useful
process/system for matching requested skills of candidates by the
user to the skills of candidates from suppliers.
Accordingly, we will not sustain the rejection of claims 1-7
under 35 U.S.C. § 101 for lack of utility.
We also will not sustain the rejection of claims 1-7 under
35 U.S.C. § 112, first paragraph, based on lack of enablement
because this rejection is premised on the lack of utility
asserted in the rejection under 35 U.S.C. § 101. Clearly, based
on the specification and the drawings, the skilled artisan would
have been taught how to make and use the instant claimed
invention without undue experimentation.
Finally, we turn to the rejection of claims 1-7 under
35 U.S.C. § 102(e) as anticipated by Puram.
A rejection for anticipation under section 102 requires that
the four corners of a single prior art document describe every
element of the claimed invention, either expressly or inherently,
such that a person of ordinary skill in the art could practice
the invention without undue experimentation. In re Paulsen, 30
F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
We make reference to the answer, at pages 6-8, for the
examiner’s rationale in applying Puram to the instant claims.
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