Appeal No. 1998-2479
Application 08/419,512
any error in the examiner's position as to the rejection of representative claim 1 on
appeal under 35 U.S.C. § 103 over Suzuki, the rejection of this claim and its dependent
claims 2 and 4 through 7 is sustained.
As to the rejection under 35 U.S.C. § 102 relying upon Minami, appellants again
argue only the features of independent claim 1 on appeal. Like the previous rejection,
appellants argue the features recited in the non-volatile memory clause. The five
embodiments discussed in Minami are reflected in the overall structures set forth in
Figures 6, 12, 13, 17 and 21 respectively. The examiner's correlation of the read only
memory 93 is only explicitly shown in Figures 13, 17 and 21. The Figure 6 showing of
the MPU 60 is expanded upon in Figure 7 where this memory 93 is clearly shown on
the right portion of that Figure. MPU 60 is shown in the same manner in Figure 12 as is
shown in Figure 6. The discussion as to this rejection at pages 13 and 14 of the brief is
misplaced because it argues features not recited in the claim, but which relate to the
motives and assessments of appellants' disclosed invention. Also, an assertion that a
reference teaches away in the context of an anticipation rejection is misplaced. See
Celeritas Techs. LTD v. Rockwell Int'l. Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516,
1522 (Fed. Cir. 1998)(“[t]he question whether a reference 'teaches away' from the
invention is inapplicable to an anticipation analysis.”).
This reference reflects a prior invention of the same assignee as the present
application. The focus of the arguments in pages 15 and 16 of the brief is that the
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