Appeal No. 2000-1811
Application No. 08/879,638
Appellants never raised this factual question with the Examiner,
we do not have the benefit of the Examiner’s position on this
question of fact. A new argument advanced in such a manner has
not afforded the Examiner an opportunity to respond to the new
argument. It is a requirement of 37 CFR § § 192 that Appellants
submit arguments in the Brief(s) specifying all of the errors
made by the Examiner in the rejection. See Ex Parte Hindersinn,
177 USPO 78, 80 (Bd. App. 1971). Consequently, we will not
consider this new argument of fact as a basis for changing our
prior decision in this case. We do note as a general observation
that, in considering the disclosure of a reference, it is proper
to take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401 F.2d
825, 826, 159 USPO 342, 344 (CAPA 1968).
With respect to the Examiner’s obviousness rejections of
dependent claim 13 based on Semmlow and Burke and of dependent
claims 15 and 16 based on Semmlow and Woodruff, Appellants’
assertion of error in our original decision relies on arguments
made with respect to the Examiner’s interpretation of Semmlow as
applied against appealed claim 1. For all the reasons discussed
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