Ex Parte Spencer et al - Page 8


              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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