Ex Parte Byren et al - Page 3

               Appeal 2007-0203                                                                             
               Application 10/139,969                                                                       
                                                                                                           
                   The Examiner’s rejections are as follows:                                                
                   1. Claims 22-27, 31, and 40 are rejected under 35 U.S.C.  103(a) as                     
                      unpatentable over Presby.2                                                            
                   2. Claims 28-30 and 32-38 are rejected under 35 U.S.C.  103(a) as                       
                      unpatentable over Presby in view of Sorce.                                            
                   3. Claims 39 is rejected under 35 U.S.C.  103(a) as unpatentable over                   
                      Presby in view of Sorce and further in view of Kittell.                               
                      Rather than repeat the arguments of Appellants or the Examiner, we                    
               refer to the Briefs and the Answer for their respective details.  In this                    
               decision, we have considered only those arguments actually made by                           
               Appellants.  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 C.F.R.  41.37(c)(1)(vii) (2004).                                                     

                                                OPINION                                                     
               It is our view, after consideration of the record before us, that the                        
               evidence relied upon and the level of skill in the particular art would have                 
               suggested to one of ordinary skill in the art the invention set forth in the                 
               claims on appeal.  Accordingly, we affirm.                                                   
                      In rejecting claims under 35 U.S.C.  103, it is incumbent upon the                   
               Examiner to establish a factual basis to support the legal conclusion of                     
               obviousness.  See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598                       
               (Fed. Cir. 1988).  In so doing, the Examiner must make the factual                           

                                                                                                           
               2 Claims 22 and 23 were rejected under a new grounds of rejection based                      
               solely on the disclosure of Presby (Answer 2-4).  Claims 24-27, 31, and 40                   
               were also rejected based solely on Presby (Answer 4-6).                                      
                                                     3                                                      

Page:  Previous  1  2  3  4  5  6  7  8  Next

Last modified: September 9, 2013