Appeal 2007-0518
Application 90/006,969
feature. The Specification would appear to support the limitation and the
Examiner has failed to explain otherwise. For example, the Specification
describes that the electronic intermediary can connect electronically with the
IRS and receive tax data from the IRS. The tax data is data that various tax
data providers provide to the IRS (FF 11). The Examiner has failed to
clearly articulate why the Specification fails to convey that the inventor had
possession of the claimed feature.
In response to Simplification’s arguments, the Examiner apparently
agrees that the Specification does provide written description support for the
electronic transmission of data and software processing using the data, but
argues that the Specification fails to explain in detail how this is
accomplished (FF 15).
Whether one of ordinary skill in the art can make or use a described
invention, e.g., enablement, is a separate and distinct requirement of
35 U.S.C. § 112, ¶ 1. The test for enablement is based on undue
experimentation, where several underlying factual findings need be made.
In re Wands, 858 F.2d 731, 8 USPQ2d 1400. The Examiner has failed to
make any such findings. We need not and will not speculate as to how the
Examiner’s rejections may possibly fit into an enablement scenario. The
Examiner has the initial burden to succinctly articulate a rationale for
rejecting the claims.
The Examiner’s rejection based on the second paragraph of 35 U.S.C.
§ 112 is verbatim the same as the written description rejection. In the
context of 35 U.S.C. § 112, second paragraph, the Examiner has failed to
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