Appeal No. 2003-1581
Application 09/425,748
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he finds the invention of
claim 1 to be fully met by the disclosure of Shtivelman [answer,
page 3]. Appellant argues that the examiner has improperly
relied on a second reference to establish that claimed features
are inherently obvious. Appellant also argues that the examiner
has improperly relied on the principle of inherency because the
claimed feature is not necessarily present in the applied
reference. Appellant argues that there is no teaching in
Shtivelman of identifying a trend or providing a status
responsive to that trend [brief, pages 6-12].
The examiner responds that he is only relying on
Shtivelman to support the rejection. The examiner asserts that
the broadest reasonable interpretation of the term “trend”
includes historical patterns as taught by Shtivelman. The
examiner also asserts that the dictionary definition of trend
demonstrates that Shtivelman anticipates “the use and necessity
-4-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007