Appeal No. 1997-3479
Application 08/495,039
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
This rejection is set forth on pages 5-6 of the
answer. In the rejection the examiner identifies how Bertin
and the admitted prior art teach portions of the claimed
invention. The claims are drafted in Jepson form. It is
noteworthy that the rejection only identifies that the
portions of the claims before the “improvement” are taught or
suggested by Bertin and the admitted prior art. The rejection
makes no effort to address the specific limitations of the
claimed invention which form the improvement. To no one’s
surprise, appellant argues that the limitations of the claims
appearing after the improvement are neither taught nor
suggested by Bertin and the admitted prior art [reply brief].
We again agree with appellant. Since the examiner has
ignored the key features of the claimed invention in making
this rejection, the examiner has failed to establish a prima
facie case of obviousness. Therefore, we do not sustain this
rejection of the appealed claims.
In summary, we have not sustained either of the
-9-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007