Appeal No. 1998-1345
Application 08/362,318
Examiner's position and to the Appeal Brief (Paper No. 12)
(pages referred to as "Br__") for a statement of Appellants'
arguments thereagainst.
OPINION
The Examiner finds that Clanton discloses the subject
matter of claims 3 and 4 except for claimed improvements
(FR4). Appellants argue that the Examiner's mapping of the
claim limitations onto Clanton is in error (Br6-8) and
"[t]hus, Clanton does not even disclose the environment
claimed in this application and certainly does not disclose
the elimination of audio portions which might be found
offensive" (Br8).
We agree with Appellants' arguments regarding the
deficiencies of Clanton. However, since claims 3 and 4 are in
Jepson format, the preambles are impliedly admitted to be
prior art. Pentec, Inc. v. Graphic Controls Corp.,2
776 F.2d 309, 315, 227 USPQ 766, 770 (Fed. Cir. 1985); Reading
& Bates Construction Co. v. Baker Energy Resources Corp.,
748 F.2d 645, 649-50, 223 USPQ 1168, 1172 (Fed. Cir. 1984);
It is not known why the Examiner did not rely on the2
Jepson claim format as admitted prior art as a starting point
in the patentability analysis.
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