Appeal No. 2007-0332
Application No. 10/316,312
Independent claim 1 (Bailey)
We consider next the Examiner’s rejection of independent claim 1 as
being anticipated by Bailey.
Appellants argue that Bailey does not disclose “automatically
translating the data unit into at least one keyword parametric entry,” as
claimed (Br. 16).
The Examiner disagrees. The Examiner asserts that a system that
performs both parametric and keyword searches transforms (i.e., translates)
data to the two different formats required by each search request (Answer
12).
While we agree with the Examiner that Bailey discloses a system that
is capable of performing both parametric and keyword searches (col. 9, ll. 9-
11), we find no specific disclosure in Bailey of automatically translating a
data unit into at least one keyword parametric entry, as required by the
language of claim 1. Bailey does disclose generic language translation at
col. 9, line 13; however, it is well settled that a genus (i.e., a generic
language translation) cannot anticipate a species (i.e., translating a data unit
into at least one keyboard parametric entry). See Perricone v. Medicis
Pharmaceutical Corp., 432 F.3d 1368, 1377, 77 USPQ2d 1321, 1326 (Fed.
Cir. 2005) (“disclosure of a broad genus does not necessarily specifically
disclose a species within that genus.”) (internal citation omitted).
Accordingly, we will reverse the Examiner’s rejection of claim 1 as being
anticipated by Bailey.
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