Appeal No. 2005-0131
Application 09/731,388
consideration of all the pertinent evidence and arguments. “In
reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” Oetiker,
977 F.2d at 1445, 24 USPQ2d at 1444. “[T]he Board must not only
assure that the requisite findings are made, based on evidence of
record, but must also explain the reasoning by which the findings
are deemed to support the agency’s conclusion.” In re Lee, 277
F.3d 1338, 1344, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002).
With respect to independent claim 1, Appellants argue at
page 6 of the brief, “Eisenhart [US2001/0047276] is effective as
prior art . . . only to the extent that the Eisenhart Provisional
[60/192,600] discloses the subject matter of the claims.” On
this point we agree.
Appellants then go on to argue at page 8 of the brief, that
with regard to the non-disclosure agreement (NDA), Eisenhart ‘600
only teaches “binary choices” where one of the parties presents a
“take-it-or-leave-it” choice to the other party. Further,
Appellants argue that Eisenhart ‘600 “provides no assessment of
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007