Ex Parte FIELDEN - Page 4




                 Appeal No. 2002-0490                                                                                  Page 4                     
                 Application No. 09/152,751                                                                                                       


                 Claim 26 stands rejected under  § 103(a) as obvious over Mowry and the appellant's                                               
                 admitted prior art ("AAPA").                                                                                                     


                                                                  OPINION                                                                         
                         Our opinion addresses the rejections in the following order:                                                             
                         •        anticipation rejection of claims 16-18, 20-22, 24, 25 and 27                                                    
                         •        obviousness rejection of claims 19, 23, and 26.                                                                 


                                  Anticipation Rejection of Claims 16-18, 20-22, 24, 25 and 27                                                    
                         Rather than reiterate the positions of the examiner or the appellant in toto, we                                         
                 address the main point of contention therebetween.  The examiner asserts, "Mowry                                                 
                 taught . . . placing a check instruction after the dismissible load (page 8, 3rd full para.;                                     
                 page 7, figure 1.4; page 129, section titled Summary)."  (Examiner's Answer at 3.)  The                                          
                 appellant "submits that the unmodified load instruction of Mowry does not perform the                                            
                 same function as the check instruction put in place of the converted load instruction in                                         
                 Appellant's claimed invention."  (Appeal Br. at 6.)  The examiner answers, "Appellant                                            
                 arguments are directed unclaimed elements, nowhere in the claims are a separate                                                  
                 check instruction recited or checking the validity of the data."  (Examiner's Answer at 7.)                                      


                         "Analysis begins with a key legal question -- what is the invention claimed?"                                            
                 Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567, 1 USPQ2d 1593, 1597 (Fed.                                               







Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007