Appeal No. 1998-0062
Application No. 08/252,896
W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). It is essential that:
the decision maker forget what he or she has been taught at trial about the
claimed invention and cast the mind back to the time the invention was made
. . . to occupy the mind of one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted wisdom in the
art. W.L. Gore, 721 F.2d at 1553, 220 USPQ at 313.
Appellants argue "assumptions that must be made by the examiner" in the prior art
rejection of the claims and provides responses to the examiner’s assumptions. (See reply
brief at pages 2-8.) We accept appellants arguments rebutting the examiner’s prima facie
case since the examiner has not responded to these arguments. (See footnote 2.) Some
of appellants’ arguments in the reply brief go beyond the express language of the claims 1,
15 and 19, for example “common-connected” on page 5, but taking the claim language as
a whole, the arguments are supported by the language of the claims. Moreover, we agree
with appellants with respect to the “fatal flaws” in the examiner’s rejection of the claims.
(See reply brief at page 8.)
Appellants argue that the examiner’s rejection ignores the express limitations found
in the language of claim 1. (See reply brief at page 5.) Specifically, the embodiment of
figure 1 does not teach the bus extender connected to a subset of the initiators. House,
teaches that the extender has access to all of the hosts, 14 and 16, rather than to a subset.
We agree with appellants. Appellants argue that House provides a busy signal on the bus,
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