Appeal 2007-0518
Application 90/006,969
“It’s W-2 Time” as applied in the anticipation rejection.
28. The Examiner recognized that Beamer does not expressly
describe collecting electronically tax data from a tax data provider, wherein
the tax data is reported on an IRS state, local or foreign tax form (Final
Rejection 22 and Answer 19).
29. Instead, the Examiner took official notice:
[t]hat it is old and well-known in the art of United States tax returns
that the IRS Form 1099 summarizes information from a bank that a
taxpayer needs to complete his/her tax return(s). For example, one
version of the IRS Form 1099 includes data such as taxable interest
earned on a bank account, i.e., information typically found on a bank
statement. Beamer does not expressly teach that the downloaded tax
data is expressly printed on an IRS Form W-2, 1098, or 1099;
however, Beamer clearly lays the groundwork for electronically
downloading tax-related data, such as a bank statement data (i.e., data
that is typically listed on an IRS Form 1099), and then using this data
for automatically and electronically performing the calculations
necessary to file an electronic tax return (Final Rejection 22-25 and
Answer 20-22).
D. Principles of Law
35 U.S.C. § 112, ¶ 1
Adequate written description means that, in the Specification, the
applicant must “convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). The written description requirement
is separate and distinct from the enablement requirement. Id.
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