Appeal No. 1998-0500
Application 08/504,478
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
Claim 17 depends from claim 13. The examiner relies
on Brodsky for teaching all the limitations of claim 13 as
noted above. The examiner’s explanation of this rejection
does not overcome the deficiencies of Brodsky noted above.
Thus, there are differences between the claimed invention and
the disclosure of Brodsky which have not been properly
addressed by the examiner. The failure to address the
obviousness of these differences between the claimed invention
and the applied prior
art results in a failure to properly establish a prima facie
case of obviousness. As noted above, the failure to make the
prima facie case of obviousness by the examiner must result in
a reversal of the rejection made under 35 U.S.C. § 103.
In conclusion we have not sustained either of the
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