Appeal No. 1997-2246
Application 08/353,572
to remove Schwendeman as a reference. The appellants argue
that Schwendeman does not claim the same invention.
Rule 1.131 allows a reference to be antedated unless it
claims “the same patentable invention” as does the appellants.
The burden is on the examiner to establish that the reference
and the appellants are claiming “the same patentable
invention.” Per 37 CFR § 1.601(n), an invention “A” is the
same patentable invention as an invention “B” when invention
“A” is the same as or is obvious in view of invention “B”
assuming invention “B” is prior art with respect to invention
“A”. The appellants have pointed to several differences
between what is claimed in Schwendeman and what the appellants
have claimed, and correctly noted that the examiner has not
properly accounted for these differences in an obviousness
analysis.
The independent claims of Schwendeman are claims 1, 9 and
18. The appellants note that both claims 1 and 9 of
Schwendeman include the feature of a channel selecting means
which is responsive to the received channel identification
information (claim 1) or detected channel identification
information (claim 9), for sequentially selecting the
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