Appeal No. 2006-2076
Application No. 09/747,651
The appellants specification states: “Another solution to
this problem [tracking transactions] involves the use of what are
known as ‘tracer images.’ This generally involves merchants
providing to all interested shopping applications data that
uniquely identifies particular transactions and then relying upon
shopping applications to claim origination of certain
transactions” (page 5, lines 15-18).
The relevant inquiry under 35 U.S.C. § 112, second
paragraph, is whether the claim language, as it would have been
interpreted by one of ordinary skill in the art in light of the
appellants’ specification and the prior art, sets out and
circumscribes a particular area with a reasonable degree
of precision and particularity. See In re Moore, 439 F.2d 1232,
1235, 169 USPQ 236, 238 (CCPA 1971).
The examiner’s mere assertion that the function and
implementation of the appellants’ tracer image are unclear does
not provide the required explanation as to why the claim
language, as it would have been interpreted by one of ordinary
skill in the art in light of the appellants’ specification and
the prior art, fails to set out and circumscribe a particular
area with a reasonable degree of precision and particularity.
Accordingly, we reverse the rejection of claims 7 and 21 under
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