Appeal No. 1999-1319
Application No. 08/495,390
appears that the examiner has established a prima facie case of anticipation.
The burden is now shifted to appellants to overcome that prima facie case by
convincing argument that the examiner has not shown that each claimed element is
disclosed in a single prior art reference. Yet, appellants do not dispute that member 13 of
Tanahashi is a nonconductor nor do they dispute that a dielectric is a nonconductor. They
argue only that “every nonconductor is not necessarily a dielectric” (emphasis ours). Yet,
appellants do not offer their own definition distinguishing “dielectric” from “nonconductor.”
At least implicitly, appellants appear to concede that at least some nonconductors are
dielectrics but point to nothing which indicates that Tanahashi’s member 13 is not a
dielectric even though they do not dispute that member 13 is a nonconductor.
Independent claims 1 and 3 recite no properties that would distinguish a “dielectric” from
the “nonconducting” member 13 of Tanahashi.
Moreover, we note, with interest, that in the discussion of the prior art, at the top of
page 2 of the instant specification, appellants themselves admit that such dielectrics are
used in the prior art as the film which is pressed by the finger for converting variations of
capacitance into a coordinate signal (also see prior art Figure 4). Accordingly, we do not
find persuasive appellants’ argument that the subject matter of instant claims 1 and 3
distinguishes over Tanahashi by the recitation of “a sensitive member made of a
dielectric.”
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007