Ex Parte 4944298 et al - Page 7

               Appeal 2007-3787                                                                            
               Reexamination 90/006,642                                                                    
               Patent 4,944,298                                                                            
           1   the Applicant through the appeal brief addressed only the third item                        
           2   pertaining to a combination of all three hardware, software, and firmware.                  
           3          Even assuming that the Applicant’s argument pertaining to the third                  
           4   item has merit, no error has been shown in the rejection because written                    
           5   description for the first and second items have not been addressed.                         
           6          In any event, we reject the Applicant’s argument directed to the third               
           7   item.  It is based on an assertion of interchangeability between software and               
           8   firmware and also misdirected to determining whether the inventors intended                 
           9   to exclude the combination of hardware, software, and firmware.                             
          10   Interchangeability between software and firmware does not lead to a                         
          11   combination of all three hardware, software, and firmware.  Also, the                       
          12   pertinent question is whether the specification conveys to one with ordinary                
          13   skill that the inventors actually contemplated the arrangement at issue, not                
          14   whether there is no evidence that the inventors intended to exclude it.  The                
          15   Applicant has not pointed to any description in the specification which                     
          16   translates to a combination of all three hardware, software, and firmware.                  
          17                           The Obviousness Rejections                                          
          18          Regarding the rejection for obviousness, the Applicant does not                      
          19   separately argue the patentability of any dependent claim apart from the                    
          20   merits of independent claims 6, 14, and 17.                                                 
          21          Not much is in dispute between the Examiner and the Applicant with                   
          22   regard to the scope and content of the prior art, the differences between the               
          23   claimed invention and the prior art, and the level of ordinary skill in the art.            
          24   The issue in this case centers about adequate motivation to combine                         


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