Ex parte DAN et al. - Page 6




          Appeal No. 96-3294                                                          
          Application 08/055,422                                                      

          Mattson of using "performance measures, such as hit/miss                    
          ratios" would not have suggested the obviousness of using                   
          Kitajima's unrelated read/write ratio.  The examiner has not                
          established a prima facie case of obviousness.  The rejection               
          of claims 1-8 is reversed.                                                  

          Claims 9 and 10                                                             
               Appellants do not directly address claim 9.  To the                    
          extent that comments made with respect to claim 1 are relevant              
          to claim 9, these comments are addressed in the analysis which              
          follows.  Otherwise, arguments not made are considered waived.              
          See 37 CFR § 1.192(c)(6)(iv) (1994) ("For each rejection under              
          35 U.S.C. 103, the argument shall specify the errors in the                 
          rejection and, if appropriate, the specific limitations in the              
          rejected claims which are not described in the prior art                    
          relied on in the rejection, and shall explain how such                      
          limitations render the claimed subject matter unobvious over                
          the prior art.").  Cf. In re Baxter Travenol Labs.,                         
          952 F.2d 388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) ("It               
          is not the function of this court to examine the claims in                  
          greater detail than argued by an appellant, looking for                     
          nonobvious distinctions over the prior art."); In re Wiechert,              
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