Appeal No. 95-3917
Application 07/861,144
Appellants argue specifically only that Merrick does not disclose "trimming." Appellants reiterate
the limitations of claims 1, 8, 14, and 20 (Brief, pages 12-13), but these arguments are not persuasive
because the limitations said to be not shown or suggested appear to be clearly shown. With respect to
rejections under 35 U.S.C. § 102, the rule for appeal briefs, 37 CFR § 1.192(c)(6)(iii) (1994), required
appellants to identify "specific limitations in the rejected claims which are not described in the prior art relied
upon in the rejection." General arguments that the whole claim is not suggested are not persuasive. We
address only those differences specifically argued by appellants. Therefore, we do not look for differences
beyond those which are discussed in appellants' brief. Cf. In re Baxter Travenol Labs., 952 F.2d 388,
391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims
in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.");
In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (arguments must first be
presented to the Board).
The declaration of Vernon McKenny under 37 CFR § 1.132 submitted with the brief states
(Declaration ¶ 5):
In integrated circuit arts, 'trimming' normally refers to precision adjustment of a passive component
(normally a resistor or capacitor) to make its value PERMANENTLY equal to a desired target
value. Trimming is usually done at the time of manufacturing, and is usually not possible thereafter.
Appellant argues that Merrick acts to dynamically control the resistance through this part of the circuit and
"[t]his is NOT the same circuit as the invention and it does NOT act the same as the invention in the overall
circuit" (Brief, page 11). McKenny states (Declaration ¶ 12):
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