Appeal No. 2005-2418
Application 09/932,639
Turning next to the rejections under 35 U.S.C. § 103
utilizing Endo alone, we reverse the rejection of independent
claims 39 and 40 essentially for the reasons set forth by the
appellant in the Brief. At the outset, additionally, we
recognize that the examiner already admits that Endo does not
teach that the electronic devices may be data storage devices of
claim 39 or devices with programmed functions in claim 40 at
page 7 of the Answer. The examiner’s reasoning there that Endo
may have or “can have” such devices is mere speculation. From
our study of Endo, there is no teaching or inference the artisan
may fairly derive from Endo that these devices are contemplated
or otherwise taught or suggested in this reference.
On the other hand, we do sustain the rejection of
independent claim 44 in accordance with the reasoning advanced by
the examiner at pages 7 and 8 of the Answer along with the addi-
tional remarks in the responsive arguments portion of the Answer
as to the rejection of claim 44 at pages 13 and 14.
A different intended use of the same structure as in
the prior art does not prohibit a statutory anticipation
rejection, for example. Indeed, it has been stated by our
reviewing court that “the absence of a disclosure relating to
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