Appeal No. 2000-0427
Application No. 08/773,173
of Ikezaki with respect to claim 34 and 35; and Kohar with
respect to claim 40; and Rumbolt with respect to claims 43-45 at
pages 14 and 15 of the brief. However, these references to
various applied prior art references are not in accordance with
37 CFR § 1.192 (c)(8)(iv)(1998), which requires that appellant
must specifically address the differences in each claim with
respect to the claimed elements and must show how they differ
from the elements in the applied references. Appellant has not
fulfilled this requirement. Therefore, the obviousness rejection
of claims 1, 7, 10, 30-35, and 40-45 over Dockery and various
combinations of the references is sustained.
Group II
We take independent claim 16 as representative of this
group. The examiner rejects claim 16 over Dockery in view of the
admitted prior art, answer at page 11. Appellant (brief at pages
16 and 17) argues that the selecting apparatus claimed in claim
16, starting with line 18 and ending with line 26, is not at all
shown by Dockery. In fact, the examiner asserts, answer at page
11, that “[n]ote that the scope of claims 16, 39, and 5 echoes
the scope of claim 1.” We disagree with the examiner’s position.
Claim 16 does have an additional feature. Therefore, the
examiner has not made a prima facie case of obviousness for the
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