Appeal No. 1999-2122
Application No. 08/564,659
of the prior art would not perform the same function [as the claim
105 apparatus]” (Answer, page 5). This position is not well taken
for a number of reasons.
First of all, the Examiner’s position completely ignores the
fact that many of the appealed claims are directed to a method
rather than an apparatus. As discussed above, the Examiner
apparently believes that the prior art apparatus of the applied
primary references would be capable of performing the same function
as the Appellant’s claimed apparatus. Even if correct, however,
this belief is simply irrelevant with respect to the method claims
before us. Stated otherwise, even if the prior art apparatus
were capable of performing the same function as the here claimed
apparatus, we perceive nothing and the Examiner points to nothing
in the applied references which would have suggested operating the
prior art apparatus in such a manner as to perform the steps and
achieve the results required by those claims under consideration
which are directed to a method (e.g., see previously mentioned
dependent method claim 125). Thus, with respect to such method
claims, it is clear that the Examiner has failed to establish
a prima facie case of obviousness.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007