Appeal No. 2001-2579 Page 16
Application No. 08/885,996
record." Id. at 1343, 61 USPQ2d at 1434. Although couched concerning combining
prior art references, we hold the same requirements apply to modifying such
references.
Here, although "the process of data comparing is well known prior art for a
certain purpose," (Examiner's Answer at 5), the examiner fails to allege, let alone show
objective evidence of, the desirability of substituting check data for Sasaki's inquiry
signal and then comparing the interpreter-identification data received from the
reference's printer with the check data substituted for Sasaki's inquiry signal.
Therefore, we reverse the rejection of claim 4 and of claims 5-9, which depend
therefrom.
CONCLUSION
In summary, the rejections of claims 1-3 under § 103(a) are affirmed. In
contrast, the rejections of claims 4-9 under § 103(a) are reversed. "Any arguments or
authorities not included in the brief will be refused consideration by the Board of Patent
Appeals and Interferences. . . ." 37 C.F.R. § 1.192(a)(2002). Accordingly, our
affirmance is based only on the arguments made in the brief(s). Any arguments or
authorities not included therein are neither before us nor at issue but are considered
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007