Appeal Number: 2006-2941
Application Number: 10/170,421
wherein at least one of the participants comprises at least one customer member.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Halley 4,750,121 Jun. 07, 1988
Deavers 6,044,352 Mar. 28, 2000
Claims 1, 2, 4 through 14, and 16 through 22 stand rejected under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description requirement.
Claims 1, 4 through 6, 8, 10 through 14, and 16 through 22 stand rejected under
35 U.S.C. § 103 as being unpatentable over Halley. Claims 2, 7, and 9 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Halley in view of Deavers.
Reference is made to the Examiner's Answer (mailed March 15, 2006) for the
examiner's complete reasoning in support of the rejections, and to appellant's Brief (filed
December 20, 2005) and Reply Brief (filed May 4, 2006) for appellant's arguments
thereagainst.
OPINION
We have carefully considered the claims, the applied prior art references, and the
respective positions articulated by appellant and the examiner. As a consequence of our
review, we will reverse the written description rejection and the obviousness rejections of
claims 1, 2, 4 through 14, and 16 through 22.
The examiner (Answer, page 3) rejects all of the pending claims under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description requirement
because the phrase “‘computer calculated’ could not be found in original specification
filed.” Appellant argues (Brief, page 6) that “the original application is not required to
provide in haec verba support for the claimed subject matter.” Instead, “one skilled in
the art, reading the original application, must immediately discern the limitation at issue
in the claims. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 56 USPQ2d 1481
(Fed. Cir. 2000).” Appellant points to the declarations from Drs. Schott and Bird as
evidence that “use of a computer to implement the calculation steps of the invention was
2
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