Appeal No. 2006-2011
Application No. 09/996,720
in the claims their broadest reasonable interpretation, we agree with appellants that the
examiner’s broadest reasonably interpretation is not reasonable in this case.
With respect to claims 30-33, in addition to the arguments considered above,
appellants argue that the portions of Himoto relied on by the examiner merely illustrate
the address region in which a program is stored. Appellants assert, however, that
Himoto does not disclose a measurement of how full the memory card is [brief, page
11]. In addition to the arguments considered above, the examiner responds that a
visual or qualitative measurement is a reasonable interpretation of the fullness of the
memory because appellants did not provide any discussion in the specification of how
to measure fullness [answer, page 32].
We will not sustain the examiner’s rejection of claims 30-33 based on Himoto for
reasons discussed above. We also agree with appellants that Himoto has no disclosure
related to a measurement of how full the memory card is. The fact that Himoto stores
information in certain regions of the memory does not convey any information about
how full the memory is. We agree with appellants that the portions of Himoto relied on
by the examiner fail to support the examiner’s rejection.
We now consider the examiner’s rejections of the claims under 35 U.S.C. § 103
based on obviousness. 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). In so
doing, the examiner is expected to make the factual determinations set forth in Graham
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