Ex Parte KELLEY et al - Page 5



          Appeal No. 2000-1187                                       Page 5           
          Application No. 08/723,174                                                  

               With respect to claim 1, the appellants argue that Cohen               
          teaches neither “at least a bus bridge having a slot” nor “at               
          least a logic gate connected between said bridge and said slot.”            
          The appellants further point out that Cohen uses programmable               
          configuration registers within a VLSI chip to report to the host            
          processor the device ID and the application code of the card                
          being used (brief, p. 4, reply brief, p. 2).                                
               The examiner responds to the appellants’ arguments by                  
          referring to the last paragraph of the specification that                   
          suggests the use of any other logic gates, boards or driving                
          signal for device ID select (answer, p. 4).  The examiner                   
          concludes that other sources for selecting the target device such           
          as Cohen’s activating a control bit after the “retry mode” is de-           
          activated, anticipates the claims (answer, pp. 4 & 5).                      
               A rejection for anticipation under section 102 requires that           
          each and every limitation of the claimed invention be disclosed             
          in a single prior art reference.  In re Paulsen, 30 F.3d 1475,              
          1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994), citing In re                
          Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).            









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