Appeal No. 2004-1420
Application 09/567,274
of the claims and cavalierly contend that Barnett “does not disclose or suggest” the claimed
subject matter (e.g., see paragraph d at page 7 of the principal brief) without further explanation.
When confronted with a rejection under 35 U.S.C. §103, an applicant is obliged to
specify the errors in the rejection and, if appropriate, the specific limitations in the rejected
claims which are not described in the prior art relied on in the rejection. Moreover, the applicant
should explain how such limitations render the claimed subject matter unobvious over the prior
art. In the instant case, appellants have failed to explain how the cited claim limitations render
the claimed subject matter unobvious. It is true that the examiner has the burden, in the first
instance, to establish a prima facie case, but, once that case is established, as we hold it was here,
appellants must come forward with specific arguments as to why the examiner’s rationale is
erroneous and why the specific claim limitations render the claimed subject matter unobvious.
For the most part, appellants have not done this.
We note that arguments that appellants could have made but, for whatever reason, have
not made, are waived. In re Kroekel, 803 F.2d 705, 231 USPQ 640 (Fed. Cir. 1986).
At page 6 of the request for rehearing, appellants argue that the claim limitation of
“generating said purchase incentive based upon frequency of prior use of purchase incentives
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