Ex Parte Ho - Page 10

                 Appeal 2007-2171                                                                                        
                 Application 09/821,066                                                                                  

                        Similarly, with respect to the subject matter of claim 13, the Examiner                          
                 relied upon paragraphs 0174 and 0233 and Fig 7 of Scheer to show that                                   
                 Scheer anticipated the subject matter of claim 13 (FF 11). Paragraph 0174 of                            
                 Scheer, for example, explicitly describes inventory managing processes                                  
                 “using a high degree of table-driven and parameter driven software                                      
                 engineering techniques” (FF 12). The Appeal Brief does not address any of                               
                 this disclosure but simply argues that Scheer does not disclose “defining a                             
                 first table identifying a plurality of parts; defining a second table, associated                       
                 with the first table, indicating functional relationships between the parts; and                        
                 recursively searching the first and second tables to generate the list of                               
                 interchangeable parts” as claimed in claim 3 (FF 5). A general allegation that                          
                 the art does not teach a claim limitation is no more than merely pointing out                           
                 the claim limitation. In that regard, a statement which merely points out                               
                 what a claim recites will not be considered an argument for separate                                    
                 patentability of the claim. 37 C.F.R. § 41.37(c)(1)(vii).                                               
                        We decline to accept Appellant’s conclusion that the Examiner has                                
                 failed to show that Scheer anticipates the claimed subject matter given that                            
                 much of the Examiner’s case in making the prima facie case of anticipation                              
                 remains unchallenged. To do so would put us in the position of acting as an                             
                 advocate for Appellant. Ernst Haas Studio, Inc. v. Palm Press, Inc., 164                                
                 F.3d 110, 112, 49 USPQ2d 1377, 1379 (2d Cir. 1999) ("Appellant's Brief is                               
                 at best an invitation to the court to scour the record, research any legal                              
                 theory that comes to mind, and serve generally as an advocate for appellant.                            
                 We decline the invitation.")                                                                            
                        We find that the Examiner has satisfied his burden of showing that                               
                 Scheer describes the claimed subject matter and all its limitations. Appellant                          

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