Appeal No. 2006-1187
Application No. 10/056,832
enable a replica to be transferred to the product purchaser necessarily flows from
the existence of the Internet.” [Brief, page 17, emphasis original.]
The examiner responds stating that a recitation of intended use of the
claimed invention must result in a structural difference between the claimed
invention and the prior art. In this case the examiner has found that the prior art
is structurally the same as the claimed invention and is capable of doing what is
performed. See answer, page 11.
We concur with the appellant. Claim 33 recites “wherein the merchant
computing device is configured to receive product information relating to a visible
feature of a product purchased by the purchaser, the received product
information being transferred as a replica order over the network to the replica
manufacturer computer device, thereby enabling a replica including the visible
feature of the product to be transferred to the purchaser.” The claim recites the
information relating to a visible feature of the product is received, then transferred
to a replica order and enables the transference of the replica to the user. Thus,
we find the information functionally relates to the step of transferring the
appropriate replica to the owner and we find the wherein limitation functionally
limits claim 33. As the examiner has presented no evidence that such features
were known at the time of the invention, we will not sustain the examiner’s
rejection of claims 33 through 39 and 45 under 35 U.S.C. § 102(b) as anticipated
over officially noticed facts concerning two computers connected by the Internet.
Claims 33 through 39 and 45 stand rejected under 35 U.S.C. §102(b) as
being anticipated by Hartman.
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