Appeal No. 1999-2687
Application 08/174,353
rehearing. We have carefully reviewed the record in this appeal,
and we find that the questions regarding motivation to combine
were properly addressed by the examiner and by the Board.
Therefore, we are not persuaded by this particular argument that
the previous decision was in error.
Appellants’ fourth point in the request is that the
decision ignores In re Donaldson. Specifically, appellants argue
that the rejection of claim 1 be reconsidered in view of the
requirements of Donaldson, as requested in the original brief on
appeal. Appellants then analyze the relevant differences that
affect this analysis [request, pages 11-13].
We note that the original brief did raise the Donaldson
issue with respect to claim 1 only. The brief only raised the
question of whether the first and second recording means were
anticipated by Wilson under a Donaldson analysis [brief, pages
12-13]. The examiner responded to this argument by analyzing why
the corresponding elements of Wilson were equivalents to the
claimed first and second recording means [answer, page 15].
Although appellants filed a reply brief, they did not further
challenge the examiner’s response with respect to the Donaldson
issue.
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