Appeal No. 2006-0862
Application No. 10/039,928
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
With respect to independent claim 1, the Examiner indicates (Answer, pages 4
and 5) how the various limitations are read on the disclosure of Dolin. In particular, the
Examiner directs attention to various portions of columns 5-7, 11, and 12 of the
disclosure of Dolin.
In our view, the Examiner’s analysis is sufficiently reasonable that we find that
the Examiner has as least satisfied the burden of presenting a prima facie case of
anticipation. The burden is, therefore, upon Appellants to come forward with evidence
and/or arguments which persuasively rebut the Examiner’s prima facie case. 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 Briefs have
not been considered and are deemed to be waived [see 37 CFR § 41.37(c)(1)(vii)].
Appellants’ arguments in response assert that the Examiner has not shown how
each of the claimed features are present in the disclosure of Dolin so as to establish a
case of anticipation. In particular, Appellants contend (Brief, pages 3 and 4; Reply Brief,
page 2) that the Dolin reference does not provide for the recording of details of the
operation of a communication system to identify and then configure the communication
system as claimed. According to Appellants, Dolin merely uses information stored in
the system at the time of manufacture to configure the system.
After reviewing the Dolin reference in light of the arguments of record, however,
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007