Appeal No. 2007-0695 Page 8
Application No. 09/837,041
as to why the Examiner finds Meltzer inherently discloses element (b) in order to
ascertain the strength of that position. The Examiner’s response that “there must
be metadata produced to define what the relationship is since the data needs to be
transformed back to the original format when sent to the requestor (1311)” is
insufficient. The Examiner must make it clear on the record why “there must be
metadata produced” in using Meltzer’s system. Without a logical explanation why
Meltzer would necessarily produce metadata to “defin[e] a relationship between
data of the request in the original format and data of the request in the transformed
format, wherein the metadata comprises a plurality of metadata instances each
configured to support a different request protocoland explanation,” the Examiner’s
position amounts to an unsupported conclusory statement.
Accordingly, we remand the application to the Examiner for further
explanation as to why element (b) of the claimed system is inherently described in
Meltzer. “To serve as an anticipation when the reference is silent about the asserted
inherent characteristic, such gap in the reference may be filled with recourse to
extrinsic evidence. Such evidence must make clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that it
would be so recognized by persons of ordinary skill.” Continental Can Co. USA v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
“[T]his modest flexibility in the rule that anticipation requires that every element
of the claims appear in a single reference accommodates situations in which the
common knowledge of technologists is not recorded in the reference; that is, where
technological facts are known to those in the field of the invention, albeit not
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