Appeal 2006-2621
Application 09/993,320
1984). The Examiner can satisfy this burden by showing that some
objective teaching in the prior art or knowledge generally available to one of
ordinary skill in the art suggests the claimed subject matter. In re Fine, 837
F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Only if this initial
burden is met does the burden of coming forward with evidence or argument
shift to the Appellant. Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444. See
also Piasecki, 745 F.2d at 1472, 223 USPQ at 788. Thus, the Examiner
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 Examiner’s conclusion
ANALYSIS
35 U.S.C. § 102(e) REJECTION
With respect to the Examiner’s 35 U.S.C. § 102(e) rejection of
independent claim 27 based on the Ha reference, Appellants’ arguments in
response assert that the Examiner has not shown how each of the claimed
features is present in the disclosure of Ha so as to establish a case of
anticipation.2 Initially, Appellants contend (Br. 9-10) that Ha lacks a
disclosure of the initiation of a firmware upgrade based on a device ID
without administrator involvement as claimed.
We agree with the Examiner (Answer 34-35), however, that there is
simply no administrator involvement in Ha’s software upgrade procedure.
2 Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant 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)].
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