Ex Parte Schramek - Page 4



          Appeal No. 2004-1224                                                        
          Application No. 09/532,379                                                  
          Exhibit A), we need not rely on this extrinsic evidence when                
          intrinsic evidence is readily available.  The examiner asserts              
          that the terminology used in appellant’s definition (“matching”             
          creates a list of characteristics from the characteristics                  
          “common” to both points of view or sets of data) is not present             
          in the specification or claims (Answer, page 4).  Contrary to the           
          examiner’s assertion, we find that appellant has adequately                 
          explained and defined “matching” in the specification (see also             
          claim 4 on appeal).  As stated on page 5, ll. 2-5, of the                   
          specification, “the internal organizational data and the external           
          organizational data is matched to create a list of common                   
          critical characteristics” (underlining added).  As further                  
          explained in the specification (page 8, l. 27-page 9, l. 3),                
          “[o]nce the matches are made between the elements of the internal           
          organizational data and the external organizational data, a                 
          preliminary list is created where the preliminary list includes             
          the common critical design, manufacturing and performance                   
          characteristics” (underlining added).  Accordingly, it would have           
          been clear to one of ordinary skill in this art, from appellant’s           
          specification, that any step of “matching” would necessitate                
          comparing two lists of elements or sets of data to create a new             
          list of common elements or data.  Therefore one of ordinary skill           

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