Ex Parte Boorananut et al - Page 6


                   Appeal No. 2006-1753                                                                                              
                   Application No. 09/732,037                                                                                        


                   and “specification coordinator” was reasonable for the reasons stated on page 10                                  
                   of the decision.                                                                                                  
                           Appellants also argue that the Board did not address (1) the examiner’s                                   
                   assertions that (1) certain language in claims 2, 7, 8, and 13 constitutes                                        
                   nonfunctional descriptive limitations, and (2) the claimed invention does not                                     
                   functionally relate to the method steps claimed [request, pages 10 and 11].                                       
                   Initially, we noted on page 3 of our opinion that we did not intend to repeat                                     
                   appellants’ or the examiner’s arguments [decision, page 3].  In any event, we                                     
                   were not persuaded by these particular arguments made by the examiner; such                                       
                   arguments were therefore not germane to our decision.  Nevertheless, based on                                     
                   the totality of the record before us, we found sufficient evidentiary support for the                             
                   examiner’s prima facie case of obviousness for the reasons previously                                             
                   discussed.                                                                                                        
                           We have carefully considered the arguments raised by appellants in the                                    
                   request for rehearing, but none of these arguments are persuasive that the                                        
                   original decision was in error.  We are still of the view that the invention set forth                            
                   in claims 2-6, 8-11, and 13-16 is not patentable over the applied prior art based                                 
                   on the record before us in the original appeal.                                                                   









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