Appeal No. 2004-0945
Application No. 09/605,929
Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947
(Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d
1671, 1673 (Fed. Cir. 1994).
As argued by Appellants, the Examiner has not established
that the vertical scrolls of Onda necessarily provide for
automatically stopping the scrolling of one frame while scrolling
of the other frame is continued. Similarly, other independent
claims 7 and 13 include the limitation of automatically stopping
the scrolling of one frame while continuing the scrolling of the
other frames. Thus, Onda cannot anticipate claims 1, 7 and 13
and accordingly, the rejection of claims 1-3, 5-9, 11-13 and 15
under 35 U.S.C. § 102 over Onda is not sustained.
Regarding the 35 U.S.C. § 103 rejection of claims 4, 10 and
14, we note the Examiner’s failure to provide any teaching or
suggestion in Gillick to overcome the deficiencies of Onda
discussed above. Based on our determination that Onda does not
teach the invention of base claims 1, 7 and 13, the rejection of
dependent claims 4, 10 and 14 based on Onda and Gillick cannot be
proper. Accordingly, we do not sustain the § 103 rejection of
claims 4, 10 and 14 over Onda and Gillick.
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