Appeal No. 2006-2648 Page 10
Application No. 09/788,387
Here, the appellants' reply brief newly argues that "Sato does not teach or
suggest, 'first display area displaying an image from the image acquisition device' and
'second display area displaying a sequence of stored image data', as recited in each of
the independent claims 1, 7, 12 and 16." (Reply Br. at 4.) Because the position set
forth in the examiner's answer regarding these limitations, (Examiner's Answer at 3), is
identical to that set forth in the final rejection, (Final Rej. at 3), we find nothing that
would have prompted the new arguments. The arguments regarding the additional
limitations of claims 1, 7, 12, and 16 could have been made in the appellants' original
brief. The term "reply brief" is exactly that, a brief in reply to new rejections or new
arguments set forth in an examiner’s answer. The appellants may not present their
arguments in a piecemeal fashion, holding back arguments until an examiner answers
their original brief. Of course, the appellant is not precluded from presenting new
arguments directly to the examiner for consideration as part of a continuing application.
Therefore, we affirm the rejection of claim 12 and of claims 1, 4, 7, 8, and 13, which fall
therewith.
Rather than arguing the patentability of claims 5, 9, and 15 separately, the
appellants rely on their aforementioned argument. Having been unpersuaded by this
argument, we affirm also the rejection of the latter claims.
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