Appeal No. 96-2741
Application 08/227,093
disputed issues, not to create them."); In re Wiseman,
596 F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (arguments
must first be presented to the Board before they can be argued
on appeal). It is not prudent to reverse a rejection based on
an uncontested limitation because, for all we know, an
appellant's reason for not contesting the limitation may be
that appellant knows it constitutes obvious subject matter.
Also, we do not have the benefit of the examiner's views.
Because the PTO has a rule which requires appellants to argue
contested limitations and because it is sound legal policy not
to get into undisputed issues, it is proper to address only
the argued limitations.
Appellants argue that they did argue that Umezawa did not
disclose locking members (plural) at page 7, second paragraph.
That portion of the Brief states that "there is no disclosure
or suggestion in Umezawa that slide member (8) has movable
locking members" (Brief, page 7). Although appellants did not
address the examiner's interpretation of elements 19-21 as
being the "movable locking members" in the Brief, since
appellants denied that the limitation was found in Umezawa we
will consider the limitation to have been argued as required
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