Appeal No. 1999-2021
Application No. 08/615,836
that the Board has overlooked or misapprehended substantive facts regarding the factual teaching of
the cited references and the controlling law regarding the use of hindsight (Request at pages 7-16).
For
the reasons stated below, we are of the view that our prior decision is justified and we are not
persuaded by the arguments presented by appellant in the Request for Rehearing to make any
changes therein.
Specifically, appellant argues (Request at page 4) that:
Based on holdings set forth in the Ex Parte Schier and Ex Parte
Ohsumi decisions, and pursuant to 37 C.F.R. § 1.192(d) (footnote
omitted), this case must be remanded back to the Examiner and the
Appellant must be given an opportunity to address any findings of
non-compliance by the Examiner.
We have reviewed the facts in the Schier and Ohsumi and find that the facts of this case are
different from the facts in those cases. In both of those cases, appellant had presented in the body
of the brief arguments regarding the individual claims. The issue was whether the board should
consider the individual arguments even though appellant’s grouping of the claims was inconsistent
with the individual arguments presented in the body of the brief. The Board disallowed the
consideration of the individual arguments in view of the special circumstances of the Schier case,
whereas the Board allowed the individual arguments in the Ohsumi case because the Board held
that the intent of appellant was to argue the claims individually even though the grouping was not
consistent with the arguments. In the present case, appellant has not presented any arguments
regarding the individual claims other than the conclusory statements made on page 11 of the brief.
2
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007