Appeal No. 2005-1147 5
Application No. 09/834,440
why the portions of Mills cited by appellants fail to overcome
the rejection [answer, pages 7-9].
We will sustain the examiner’s anticipation rejection of
claims 1-4, 6, 7, 9-12, 14 and 16-18 for essentially the reasons
argued by the examiner in the answer. When the hand of a human
subject is considered to be a “body part” within the meaning of
the claim, we agree with the examiner that the measurements in
Mills on adjacent fingers constitute measurements at adjacent
areas on the body part as argued by the examiner. Although
appellants were permitted to file a reply brief, they have failed
to specifically address the examiner’s interpretation that a hand
can be considered to be a body part within the meaning of the
claims. Thus, the examiner’s response to the arguments section
of the answer has raised persuasive arguments in support of the
anticipation of the claimed invention by Mills, which arguments
have gone totally unrebutted by appellants. Thus, this record
completely supports the position argued by the examiner.
We now consider the rejection of claims 5, 8, 13 and 15
under 35 U.S.C. § 103. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the examiner to establish a factual
basis to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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