Appeal No. 96-1614
Application No. 08/236,660
obviousness based upon the totality of the evidence and the
relative persuasiveness of the arguments.
We consider first the rejection of claims 37-46 as
unpatentable over the teachings of Fong taken alone. We will
consider the rejection with respect to claim 37 as
representative of all the claims within this group. This
rejection is set forth on page 4 of the answer. The rejection
identifies the perforated portion as the difference between
Fong and the invention of claim 37, and the rejection explains
the obviousness of this feature.
Appellants have offered only a single argument against
this rejection. Specifically, appellants argue that Fong
“lacks the perforated portions of the present invention, which
are specifically recited in claims 37-39" [brief, page 4].
Appellants point out benefits of these perforated portions and
argue that the skilled artisan would not have appreciated the
desirable advantages of these perforated portions [id.].
The examiner adopted an essentially new position in
the response to argument section of the answer wherein he
explained why the touch sensitive area of Fong’s Figure 13
would be a perforated area [answer, page 7]. Appellants did
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