Ex Parte Robins - Page 6



                 Appeal No. 2004-2090                                                                                 
                 Application No.  09/540,391                                                                          

                 dictionary definition.  In such a case, the inconsistent dictionary definition must                  
                 be rejected.” Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d at 1204,                      
                 64 USPQ2d at 1819 (Fed. Cir. 2002).  (“[A] common meaning, such as one                               
                 expressed in a relevant dictionary, that flies in the face of the patent disclosure is               
                 undeserving of fealty.”); Id.  (citing Liebscher v. Boothroyd, 258 F.2d 948, 951,                    
                 119 USPQ 133, 135 (C.C.P.A. 1958) (“Indiscriminate reliance on definitions                           
                 found in dictionaries can often produce absurd results.”)).                                          
                        The term “feature” has many definitions, however we find the definition “a                    
                 prominent or conspicuous part or characteristic”1 is consistent with the usage of                    
                 the term “feature” in appellant’s specification. (See for example page 1 and                         
                 example description of a feature in field 55 of figure 5).  Thus, we find that the                   
                 scope of claim 15 includes describing a product’s characteristics and defining                       
                 tasks, which are associated with the characteristics of the product.  We find that                   
                 claim 26 includes similar limitations.                                                               
                        Having determined the scope of the claims we next turn to the rejection                       
                 asserted by the examiner. In rejecting claims under 35 U.S.C. § 103, the                             
                 Examiner bears the initial burden of establishing a prima facie case of                              
                 obviousness.  In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.                         
                 Cir. 1992).  See also In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788                         
                 (Fed. Cir. 1984).  It is the burden of the examiner to establish why one having                      
                 ordinary skill in the art would have been led to the claimed invention by the                        



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