Appeal No. 96-2741
Application 08/227,093
Appellants argue that "[a] person skilled in the art
knows that a telephone holder has one cradle to hold one
telephone handset" (RR2) and that "[a] person skilled in the
art is not going to view Kotitalo as having two cradles to
hold a single handset" (emphasis omitted) (RR2). Appellants
argue that the only cradle in Kotitalo is element 1.
At the time appellants' brief was filed, Patent and
Trademark Office (PTO) rules required: "For each rejection
under 35 U.S.C. 102, the argument shall specify the errors in
the rejection and why the rejected claims are patentable under
35 U.S.C. 102, including any specific limitations in the
rejected claims which are not described in the prior art
relied upon in the rejection." 37 CFR
§ 1.192(c)(8)(iii)(1995). The examiner found Kotitalo to have
a "cradle (5, 7)" (FR3; EA6). Appellants did not address the
error in the examiner's interpretation in their appeal brief.
In their reply brief, appellants asserted that "'1' is the
cradle." Arguments made for the first time in a reply brief
are generally not considered. See 37 CFR § 1.193(b) ("The
appellant may file a reply brief directed only to such new
points of argument as may be raised in the examiner's
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