Appeal No. 2005-0499
Application No. 09/812,733
bit storage, and dirty bit logic (col. 4, l. 60 - col. 5, l. 20; Fig. 2),3 but admits that the
components are not disclosed as being part of a context switch controller (although
context switching is discussed at col. 1, ll. 31-39 of the reference). However, the
examiner finds that Emer meets all the structural limitations in the body of claim 34, and
provides reasons why the preamble of claim 34 (i.e., the “context switch controller”) is
considered to not limit the scope of the encompassed subject matter.
Although ostensibly based on § 103, the rejection of claim 34 as set forth in the
Answer could thus be regarded as a finding of anticipation. In any event, a finding of
anticipation means that the claim is also obvious under 35 U.S.C. § 103; anticipation is
the epitome of obviousness. See, e.g., Connell v. Sears, Roebuck & Co., 722 F.2d
1542, 1548, 220 USPQ 193, 198 (Fed. Cir. 1983); In re Fracalossi, 681 F.2d 792, 794,
215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402, 181 USPQ
641, 644 (CCPA 1974).
We consider the examiner’s position with respect to the preamble of claim 34 to
be reasonable. The preamble of a claim does not limit the scope of the claim when it
merely states a purpose or intended use of the invention. In re Paulsen, 30 F.3d 1475,
1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
Appellants did not complain (e.g., by way of petition) that the reasoning in the
Answer represented a new ground of rejection. Appellants could have responded to the
3 We add that claim 34 does not require a plurality of storage groups.
-5-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007