Ex Parte Spencer et al - Page 4

              Appeal No. 2006-2011                                                                                     
              Application No. 09/996,720                                                                               


              the briefs along with the examiner’s rationale in support of the rejections and arguments                
              in rebuttal set forth in the examiner’s answer.                                                          
              It is our view, after consideration of the record before us, that the evidence relied                    
              upon supports the examiner’s rejection of claim 14.  We reach the opposite conclusion                    
              with respect to all other claims on appeal.  Accordingly, we affirm-in-part.                             
              We consider first the examiner’s rejections of the claims under 35 U.S.C. � 102                          
              based on anticipation.  Anticipation is established only when a single prior art reference               
              discloses, expressly or under the principles of inherency, each and every element of a                   
              claimed invention as well as disclosing structure which is capable of performing the                     
              recited functional limitations.  RCA Corp. v. Applied Digital Data Systems, Inc., 730 F.2d               
              1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert. dismissed, 468 U.S. 1228 (1984);                        
              W.L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303,                      
              313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).                                                 
              With respect to the rejection of claims 14, 30 and 32 based on Bruce, the examiner                       
              has presented findings in support of anticipation [answer, pages 4-6].  With respect to                  
              claim 14, appellants argue that the portion of Bruce relied on by the examiner is a                      
              physical block address rather than an amount of memory as claimed.  Appellants note                      
              that while a block address may correspond to a region in memory, it is not itself an                     
              amount of memory [brief, pages 6-7].  The examiner responds that it is not the block                     
              address that meets the claimed amount of memory, but rather, the block of memory                         
              itself is the amount of memory which meets the claimed invention [answer, page 28].                      


                                                          4                                                            




Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007