Appeal No. 1998-1651
Application No. 08/594,964
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the examiner's
answer (Paper No. 8, mailed Dec. 19, 1997) for the examiner's reasoning in support of the
rejections, and to the appellant's brief (Paper No. 7, filed Nov. 12, 1997) for the
appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
As pointed out by our reviewing court, we must first determine the scope of
the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). We find that the examiner has not
provided a teaching or convincing line of reasoning why one skilled in the art would have
desired to modify the teachings of Parks to achieve the invention as recited in claim 1.
Therefore, the examiner has not provided a prima facie case of obviousness with respect
to claims 1 and 9.
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