Appeal No. 96-0033
Application 08/066,638
they fail to consider a reasonable association of the teachings
of the reference to the scope of the claims on appeal. As
pointed out by the examiner at pages 8 and 9 of the answer,
such a presentation belies the prosecution history of this
application. In any event, appellants’ further assertion that
the examiner has, by this approach, not met the rationale of
In re Donaldson Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir.
1994), is also misplaced. The examiner’s basic position asserts
either corresponding structural elements or the structural
equivalence of the claimed elements rejected, which approach
shifts the burden to appellants to detail what portions of the
specification disclosed for those claims utilizing the means-
plus-function format of 35 U.S.C. § 112, paragraph six, are not
in the reference. This burden appellants have not met.
Appellants’ assertion at the bottom of page 10 and on top of
page 11 of the brief is also misplaced in that it is immaterial
to the scope and subject matter of the claims on appeal whether
or not the reference requires an external clock to control the
data rate transfers. The clocking control circuit 24 in Figure 1
of Trost operates in conjunction with the clocking signal
provided on line 41 from the dynamic storage device 10, as well
as the clock signal provided from the requestor 11 on line 40.
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