Appeal No. 2006-1187
Application No. 10/056,832
Groups C, D and E (rejection under 35 U.S.C. 102).
Appellant states that claim 7 recites the step of “providing a registrar for
receiving the product information from the merchant, the registrar using the
product information and information relating to an owner of the product to
associate the product and the replica with the owner.” Appellant argues that the
examiner’s rationale equating the registrar with an employee, such as a sales
representative who is responsible for sales of replicas, is flawed Turkel does not
disclose such a person who equates the orders with the owners.
In response, on page 10 of the answer, the examiner states that:
[W] hen a sales representative (the registrar) takes an order, such as from
the bank, they are inherently associating the owner with the product based
on the order itself. It is not reasonable to take a position that the sales
representative of Fernwood will not be associating (very broad term) the
owner and the replica to each other.
We disagree with the examiner’s rationale. Initially, we note that Turkel’s
article (referred to as Fernwood by the examiner) makes no mention of a sales
representative. Further, the examiner has not presented convincing evidence
that such a representative would associate the replica with the owner of the
product (in Turkel’s article the owner would be the home owner). The examiner’s
statement that making such an association is inherent is not well taken.
Inherency is not established by possibilities or probabilities. In Turkel’s article it
appears that the replicas of houses are ordered by the bank and delivered to the
bank that then gives the replica to the purchaser of the house. Thus, there is no
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