Appeal No. 2001-0774
Application 09/087,521
pages 2-15). The examiner withdrew the grounds of rejection with respect to appealed claims 14,
18, 19, 24 and 28 (id., page 7), and did not state or acknowledge any of the grounds of rejection
set forth in the final rejection with respect to appealed claims 3 through 13, 15, 17, 20 through
23, 26 and 27.
Our review of the record shows that the four grounds of rejection advanced by the
examiner present the issues that are dispositive with respect to the grounds of rejection set forth
in the final rejection but not advanced in the answer.2 Thus, based on this record, and in this
instance, we determine that the format selected by appellants to argue the issues and the
examiner’s adoption of that format serves the interests of judicial economy in deciding this
appeal, and thus, we will not remand this appeal to the parties for a complete statement of all of
the grounds of rejection of record as set forth in the final rejection and a briefing of the issues in
each of those grounds of rejection. See 37 CFR §§ 1.192(c)(7), 197(c)(8)(iv) and 1.193 (a)(1)
(2000).
We have carefully so considered the record in this appeal under 35 U.S.C. § 134,
including the opposing views of the examiner, in the answer, and appellants, in the brief and
reply brief, and based on our review, find that we cannot sustain any of the four (4) grounds of
rejections advance by the examiner on appeal: appealed claim 1 under 35 U.S.C. § 103(a) as
being unpatentable over English in view of Heckman et al. (Heckman) and Gibson (answer, page
4); appealed claim 2 under 35 U.S.C. § 103(a) as being unpatentable over English in view of
Heckman and Gibson (id., page 6); appealed claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over English in view of Heckman, Koch, II (Koch) and Weaver (id., page 8); and
appealed claim 25 under 35 U.S.C. § 103(a) as being unpatentable over Koch in view of
Heckman and English (id., page 13).
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
1 See specification, pages 20-30, and the amendments of November 15, 1999 (Paper No. 7).
2 We note that none of the four grounds of rejection advanced by the examiner involve
Borgmann and Mesnard et al. (see answer, page 3), a discussion of which is not necessary to
consider the issues in these four grounds of rejection.
- 2 -
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007