Appeal 2007-1672
Application 09/966,540
Appellant that the Examiner is taking the position that Buckley inherently
teaches a communication module configured not to provide the identification
of a user. In that regard, when a reference is silent about an asserted
inherent characteristic, it must be 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. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991). However, we find the Examiner has provided a basis in fact and/or
technical reasoning to reasonably support the determination that the
allegedly inherent characteristic necessarily flows from the teachings of
Buckley and that it would be so recognized by persons of ordinary skill. See
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990).
As the Examiner has argued (FF 1 and 4), Buckley discloses an
interactive data transfer system comprising a pen, a data well, and a remote
computer and teaches obtaining product information from a product server
through a privacy server (see Fig. 5). There is no indication that
identification of a user of the transaction device (i.e., pen and data well)
must or would be provided. One of ordinary skill would use the Buckley
system without any expectation of having to provide his/her identification.
One of ordinary skill would use the Buckley system in the manner described
and the most efficient way of doing that would be to do it as described in the
reference, which is without adding an additional step of providing his/her
identification. We see no reason why one of ordinary skill using the
Buckley device would include a step of providing identification when one of
ordinary skill would have no reason to do so. We find that the normal
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