Appeal No. 95-4501
Application No. 07/827,549
The examiner’s only substantive explanation of where to
find such limitations in Daniels occurs at pages 10-11 of the
answer, in responding to appellants’ argument that there is no
such teaching in Daniels. The examiner states:
...one of ordinary skill in the DP art would
clearly see the ability to isolate and test the
circuits independently. Daniels [sic, Daniels’]
teaching of control of the timing module...seems a
clear teaching...of something capable of starting
and stopping operations. From Daniels’ teaching of
a CPU which can execute instructions...one...would
readily conclude that halt/stop instructions might
be executed.
The initial burden is on the examiner to make out a prima
facie case of anticipation and/or obviousness with regard to
the claimed subject matter. Although the examiner has pointed
to various, broad sections of the Daniels disclosure (column
4, lines 30 through 63, column 8, line 57 through column 9,
line 50, column 19, lines 19 through 23), the examiner never
specifically points out the particular part or parts of the
Daniels disclosure which anticipate or make obvious the
claimed starting and/or stopping operations. As appellants
state, at page 5 of the principal brief, appellants are left
“to speculate as to how [the] examiner concludes that the
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007