Appeal No. 2004-2256
Application 10/042,738
Claims 1, 3-7 and 9-12 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hopper according to both
the final Office action (i.e., Paper No. 7 mailed September 23,
2003) as well as the Examiner’s Answer (i.e., Paper No. 11 mailed
June 16, 2004).
Claims 13-17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable or Hopper in view of Suh according to the
final Office action and as being unpatentable over Suh in view
of Hopper according to the Examiner’s Answer.1
1 On page 5 of the Answer, after setting forth the § 103
rejection based on Suh in view of Hopper, the examiner states:
It should be noted that the order in which the
references are used [i.e., in the § 103 rejection as
set forth in the Answer] is not a new ground of
rejection because the rejection above relies on the
same teachings of the references as the rejection
applied in the [final] Office action of September 23,
2003.
On the record before us including the Reply Brief filed in
response to the Examiner’s Answer, the appellant has expressed no
disagreement with the examiner’s determination that the § 103
rejection set forth in the Answer does not constitute a new
ground relative to the rejection set forth in the final Office
action. Under these circumstances, we will accept, as the
appellant implicitly has done, the examiner’s aforenoted
determination. It follows that, in assessing the merits of the
examiner’s obviousness position, we will consider both the
rationale expressed in the final Office action (i.e., Hopper in
view of Suh) and the rationale expressed in the Answer (i.e., Suh
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