Appeal 2007-0786
Application 10/262,142
interpretation of an embedded processor function will not be read into the claimed
invention.” (Answer 16). Based on the claims construction discussed above in
connection with the Section 102 rejection, neither Cesta nor RC 2739 teach a
controller embedded with a resource (Findings of Fact 5-6), and the Examiner has
not made out a prima facie case of obviousness as to claim 21 and its dependent
claims 22-23 and 25-27.
D. Rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Cesta in view of RFC 2739 and further in view of Applicants’ admitted
prior art.
Appellants argue the patentability of claim 24 on the bases of its dependency
from independent claim 21 and the fact that Applicants’ admitted prior art does not
remedy the deficiencies of the combination of Cesta and RFC 2739 asserted by
Appellants in connection with the above Section 103(a) rejection of claim 21.
Because neither Cesta nor RC 2739 teach a controller embedded with a resource
(Findings of Fact 4-5) and Appellants do not admit such a structure to be prior art,
the Examiner has not made out a prima facie case of obviousness as to claim 24.
CONCLUSIONS
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-5, 7-10, 12, 13, and 16-19 under 35 U.S.C. § 102(b) and claims
6, 11, 14-15, and 20-27 under 35 U.S.C. § 103(a).
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