Ex parte MONTI et al. - Page 7





              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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