Appeal 2007-0014
Application 10/202,227
that satisfy the input attributes for an electronic document to be created, this
reasoning is not set forth by the Examiner and would require some motivation not
found in Koski. Nevertheless, this is not the only problem with the rejection.
The second issue involves step "(d) modifying, automatically, the selected
document to correspond to the inputted features to create an electronic document to
be used in creating a new electronic document." Appellant states (Br. 3) that this
feature is described at lines 7-8 of page 5 of the filed specification, which states:
"Perform an adaptation process on the selected documents to create the final
desired output document." The "adaptation process" corresponds to "modifying."
The specification states to "use an adaptation mechanism to transform that solution
to meet exactly the requirements of our new document" (page 5, ll. 21-22), that
corresponds to claim step (d). There is no description instructing one of ordinary
skill in the art how to make or use "an adaptation mechanism" which would
automatically modify a selected document so, presumably, the Examiner has
determined this to be within the level of ordinary skill in the art or the application
would be nonenabling. See In re Epstein, 32 F.3d 1559, 1568, 31 USPQ2d 1817,
1823 (Fed. Cir. 1994) ("Rather, the Board's observation that appellant did not
provide the type of detail in his specification that he now argues is necessary in
prior art references supports the Board's finding that one skilled in the art would
have known how to implement the features of the references and would have
concluded that the reference disclosures would have been enabling."); In re Fox,
471 F.2d 1405, 1407, 176 USPQ 340, 341 (CCPA 1973) (appellant's specification
"assumes anyone desiring to carry out the process would know of the equipment
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