Appeal 2007-0712
Application 90/006,713
obviousness or non-obviousness. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1731, 82 USPQ2d 1385, 1389 (2007), Graham v. John Deere Co. of Kansas City,
383 U.S. 1, 17-18 (1966).
E. Analysis
The 112, ¶¶ 1 and 2 rejections
Simplification argues that the Examiner failed to follow the
requirements for reexamination proceedings and that the rejections of claims
29-36 under 35 U.S.C. § 112, ¶¶ 1 and 2 were improper (FF 12). The
Examiner argued that the amendatory language changed the scope of the
claims 29-36 and therefore the rejection is proper (FF 13). We need not
decide who is correct, since even considering the Examiner’s rejections we
cannot sustain the rejections made.
We first address the arguments made in the context of the written
description requirement. The Examiner initially bears the burden to
demonstrate that the Specification fails to provide written description
support for the claimed invention. Inherent in that demonstration is that the
Examiner clearly articulates a reason for making the rejection. In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). In order to demonstrate that
a claim term lacks written description support, the burden is initially on the
Examiner to demonstrate that the inventor did not have possession of the
claimed invention.
The Examiner argued that there is not a clear picture of the intended
metes and bounds of the electronic collection of tax data wherein the tax
data collected electronically is not collected manually or manually entered
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