Appeal No. 2004-1420
Application 09/567,274
In particular, appellants contend that we assumed facts not in evidence as the basis for
our conclusion that the examiner had established a prima facie case of obviousness. Moreover,
appellants argue that although the examiner has provided no reason as to why the claimed
subject matter would have been obvious, our decision merely points to the fact that appellants
have not traversed the non-existent reasoning of the examiner, specifically pointing to page 8,
line 17, through page 9, line 7 of our decision (see page 5 of the request for rehearing).
Moreover, appellants argue, the examiner did not point out where and how the Barnett
reference made the claimed subject matter obvious and, in fact, the examiner’s assertions were
only sufficient to support an allegation of anticipation, not obviousness (page 5 of the request for
rehearing).
We disagree with appellants.
First, it is clear, from page 3 of the answer that the examiner’s reasons for rejection of the
claims were based on obviousness, and not anticipation. Note that at that portion of the answer,
after indicating that Barnett discloses various claimed elements, and where those disclosures
may be found within Barnett, the examiner indicates that Barnett “does not specifically teach
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