Appeal No. 2006-1649
Application No. 10/212,191
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, page 3)
how the various limitations are read on the disclosure of Bengtsson. In particular, the
Examiner directs attention to the illustration in Figure 1 of Bengtsson as well as the
disclosure at various portions of columns 2, 3, and 6 of Bengtsson.
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 is present in the disclosure of Bengtsson so as to establish
a case of anticipation. In particular, Appellants’ arguments focus on the contention that,
in contrast to the claimed invention, Bengtsson does not disclose the adjustment of a
control point for controlling light passing through a modulator, nor the adjustment of
detector gain in response to the control point adjustment. According to Appellants
(Brief, pages 8-10; Reply Brief, page 4), the Examiner has improperly equated the
control of the amount of power reaching a sample or the control of a laser attenuator
with the Appellants claimed control point adjustment.
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