Appeal 2007-0518
Application 90/006,969
explain why the scope of the invention sought to be patented cannot be
determined from the language of the claims, the Specification or the
teachings of the prior art with a reasonable degree of certainty, as required.
In re Wiggins, 488 F.2d 538, 541, 179 USPQ 421, 423 (CCPA 1973).
As already discussed above, at the heart of the Examiner’s rejections
is that the Specification does not provide enough information such that one
of ordinary skill in the art would be able to make or use the invention.
However, whether a Specification conveys enough information to enable
one of ordinary skill in the art to make or use an invention is a different and
separate requirement from the written description requirement or the
definiteness requirement. In that respect, and as already explained, the
Examiner has failed to make the requisite findings to support the assertions
made, e.g., that one of ordinary skill in the art would not know how to make
or use the invention without undue experimentation.
In addition to the above, and with respect to claims 33 and 36, we
cannot sustain the rejection for the following reasons. Claims 33 and 36
both recite “collecting automatically and electronically tax data from said tax
data provider, wherein said tax data is reported on an Internal Revenue
Service (“IRS”), state, local, or foreign tax form.” The Examiner argues that
the claim language is indefinite since the claim could properly be interpreted
as requiring active reporting. Specifically, the Examiner asks whether the
tax data is reported, and if so, by whom (FF 8). We disagree with the
Examiner that the claim may be properly interpreted to require active
reporting of tax data to anyone. Simplification argued, and we agree, that
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