Appeal No. 1998-2017
Application No. 08/802,216
disclosure is “non-enabling,” or precludes data routed “from” the tape. However, it
appears that at most Moss suggests selectively routing computer data or fax data from a
magnetic tape. Even if the fax machine could be considered a “video means,” and the fax
data could be considered “video data,” the data would not be routed to the fax in response
to a detection of the absence of a header on the magnetic tape, as required by
independent Claims 13 and 19.
Finally, appellants argue that the prior art does not support the assertion that it was
“notoriously well known” that computer tapes had headers while video tapes did not (see
Brief, page 13). The examiner merely repeats the bare assertion on page 4 of the Answer
without providing any evidentiary support. The fact alleged appears to relate to the state of
the art, or to esoteric knowledge in the art, rather than to a matter of general knowledge of
which official notice may be taken, and should have been supported by a showing from the
prior art in the first instance. See, e.g., In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418,
420-21 (CCPA 1970)(allegations concerning specific “knowledge” of the prior art, which
might be peculiar to a particular art should be supported and the appellant given the
opportunity to make a challenge). In any event, appellants challenged the assertion. The
burden was on the examiner to provide evidence in support, which burden was not met.
For the foregoing reasons we conclude that the rejection fails to set forth a prima
facie case for obviousness of the claimed subject matter as a whole. There is another
matter, however, that requires attention. The examiner cited a reference “not relied upon”
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