Appeal No. 96-3288
Application 08/309,544
stylus would be positioned above the finger as in independent
claim 1 is allegedly a design choice to the examiner. The
examiner specifically argues at page 4 of the answer that the
center longitudinal axis of the ring being parallel to that of
the stylus as well as the specific orientations set forth in
claims 8 to 14 were considered by the examiner to have been a
matter of design choice. Design choice arguments, while valid
per se, have limited applicability and persuasiveness.
Furthermore, the examiner views method claim 16 as
setting forth how to use the apparatus allegedly specified in
claim 1. The examiner apparently views that since the device
of Garwin as modified by Levine meets the apparatus claim 1
limitations,
the method of claim 16 is inherently met. This and the design
choice line of reasoning advanced by the examiner as to the
initial claims on appeal essentially beg the question within
35 U.S.C. § 103. Substantially all or major portions of each
independent claim on appeal are left unexplained as to why
they would have been obvious other than on the basis of such
weak arguments. Certainly, there is little evidence in the
applied prior art of Garwin and Levine to suggest to the
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007