Ex parte OLSON et al. - Page 5




               Appeal No. 1996-0331                                                                                               
               Application 08/239,942                                                                                             


               result from a given set of circumstances is not sufficient.”  Hansgirg v. Kemmer, 102 F.2d 212, 214, 40            

               USPQ 665, 667 (CCPA 1939) (emphasis in original); see also Ex parte Skinner, 2 USPQ2d 1788,                        

               1789 (BPAI 1986).                                                                                                  





                      Appellants argue (Brief, page 5) that the examiner has not set forth a prima facie case under 35            

               U.S.C.  102, because each and every element of the appealed claims is not taught.  We agree, and                  

               accordingly we cannot sustain the examiner’s rejection of claims 1 and 31 on appeal under 35 U.S.C.               

               102(b).                                                                                                            

                      Specifically, appellants argue (Brief, page 4) that Hawkins does not teach altering a data                  

               structure, but instead alters just the data itself.  We note that representative claim 1 requires "altering an     

               existing data structure," and makes five other references to the data structure (see claim 1 at lines 2, 4,        

               13, 14 to 15, and 16).  Therefore, we find that despite the examiner’s arguments that the preamble                 

               should not be given patentable weight (see Answer, pages 3 to 4), the preamble and the body of claim               

               1 are interwoven to the extent that the preamble depends upon the body of claim 1 for completeness.                

               Thus, we agree with appellants that for Hawkins to anticipate claim 1, Hawkins must explicitly or                  

               inherently disclose the recited feature of altering an existing data structure.  We find that Hawkins does         

               not teach such a feature.                                                                                          


                                                                5                                                                 





Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007