Appeal No. 2001-1786
Application 08/420,796
Eisele patent. Specifically, with respect to independent claim
28, appellant argues that claim 28 is directed to a security
system while no claims of the patent define a security system or
security device [brief, pages 15-16]. The examiner responds that
since the Eisele patent and this application have the same
disclosure, and since the claims are recited in “means-plus-
function” form, the data processor means of this application is
the same as the data processor means of the patent when the
specification is used to interpret the claimed subject matter
[answer, pages 10-11]. The examiner also responds that even if
the processor means of the patent do not include the disclosed
security features, such feature would have been obvious to the
artisan anyway [id., pages 11-12].
We do not agree with either of the examiner’s positions
in support of the rejection. On the latter point, the examiner
has failed to provide evidence in support of the obviousness of
adding the claimed security features to the claims of the Eisele
patent. Merely because security features were known in the art
is not evidence that it would have been obvious to add these
features to the claimed invention of the Eisele patent. See the
discussion of claim 11 in In re Thrift, 298 F.3d 1357, 63 USPQ2d
2002 (Fed. Cir. 2002). Thus, the Board cannot accept mere
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007