Appeal 2007-0712
Application 90/006,713
onto said electronic tax return as recited in claims 29-32 (FF 7(1)). The
Examiner acknowledges that portion of the Specification that describes this
feature, yet fails to explain why that description fails to convey to one of
ordinary skill in the art that the inventor had possession of the claimed
feature. For example, the Specification states that “the invention eliminates
the current requirement that a taxpayer manually collect the tax data,
eliminates the current requirement that a taxpayer manually enter such tax
data onto a tax return or into a computer…” (FF 9). That description is very
similar to the claim language that the Examiner argues does not have written
description support. Yet, the Examiner has failed to clearly articulate why
the passage does not support the claim language.
The Examiner also argued that the Specification does not render a
clear picture of the metes and bounds of the automatic and electronic
collection of tax data. Again, the Examiner has failed to articulate in any
meaningful way why the description discussed immediately above or that the
Specification as a whole fails to convey to one of ordinary skill in the art that
the inventor had possession of the claimed feature. For example, the
Specification describes that once the tax payer provides account or
identification data to the intermediary, the intermediary then may
electronically search databases for the tax payer’s tax data (Specification
col. 4:51-56), or the electronic intermediary may electronically contact and
collect from the tax data providers the tax payer’s tax data (Specification col.
4:56-62). The Examiner has failed to clearly articulate why such
descriptions fail to convey to one of ordinary skill in the art that the inventor
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