Appeal No. 96-0113
Application 07/848,779
that the burden has been reasonably discharged. It has not.
Although the examiner stated (Paper No. 13 at 3) "[s]ee the
protest under 37 CFR 1.191(a) for [a] detail explanation of the
35 USC 103 rejection," the protest discusses an article by
Sullivan et al. and not Sullivan '517 (U.S. Patent No.
5,214,517), and an article by Parker et al. and not Parker
(U.S. Patent No. 5,111,310). At oral hearing, however, the
appellant's counsel acknowledged that insofar as the obviousness
rejection is concerned, the Sullivan article can be regarded as
an equivalent of Sullivan '517 and the Parker article can be
regarded as an equivalent of Parker.
The examiner has not made clear which alleged facts or
contentions in the protest have been adopted by him as his own
and why they would be relevant in the obviousness rationale as
contemplated by the examiner. Some of the discussions in the
protest do not have an immediately apparent significance in the
context of the appellant's specific claims, such as that about
use of a single value function. The protest also does not
address any specific claims as amended. Explanations are
necessary to work the general protest discussions into a specific
ground of rejection directed to specific claims. In the
circumstance here, saying that for a detailed explanation of the
-17-
Page: Previous 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 Next
Last modified: November 3, 2007