Appeal No. 2001-2262
Application 09/006,014
Piasecki, 745 F.2d 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 appellants
have been considered in this decision. Arguments which
appellants could have made but chose not to make in the brief
have not been considered and are deemed to be waived by
appellants [see 37 CFR § 1.192(a)].
The examiner’s rejection is set forth on pages 5-6 of the
answer. Although the examiner acknowledges that there are
features of these claims which are not disclosed by Takino, the
examiner dismisses these differences as being obvious to the
artisan. Appellants argue that Takino teaches away from the
claimed invention [brief, pages 12-13]. The examiner responds
that appellants have failed to define the third direction in a
manner which distinguishes over Takino and repeats the assertion
that the differences between the claimed invention and Takino
would have been obvious to the artisan [answer, pages 10-11].
We will not sustain the examiner’s obviousness rejection of
claims 8, 9 and 12. Since the examiner’s rejection relies on an
improper reading of the claimed invention on the disclosure of
Takino for reasons discussed above, the examiner has failed to
establish a prima facie case of obviousness. We also agree with
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