Appeal No. 2006-3329
Application No. 10/637,989
not be considered Acartridge libraries@ to the ordinary artisan, notwithstanding the
examiner=s statement of the rejection. We are in substantial agreement with appellants=
position in the briefs.
Owens refers to structures 103, 104 as tape cartridge transport magazines,
described as part of autoloader/library system 100 (e.g., col. 5, ll. 10-19). The Owens
reference indicates, at column 1, lines 20 through 30, that tape cartridge libraries store
and manage multiple tape cartridges, and typically include a plurality of fixed tape
cartridge storage locations, at least one read/write tape drive, and a cartridge picker.
The reference that is applied against the claims, itself, draws a distinction between
cartridge libraries and cartridge transport magazines, and thus indicates that the artisan
would not regard a Atape cartridge transport magazine@ to be synonymous with a
Acartridge library.@
We agree with the examiner to the extent that the instant specification does not
define the recitation in controversy in terms of what a cartridge library must include or
must not include. However, on this record we agree with appellants that the burden is
on the examiner to provide evidence in support of the examiner=s claim interpretation,
rather than on appellants to provide extrinsic evidence in support of their arguments, as
a consequence of the instant allocation of burdens. The examiner bears the initial
burden of presenting a prima facie case of unpatentability. If that burden is met, the
burden of coming forward with evidence or argument shifts to the applicant. After
evidence or argument is submitted by the applicant in response, patentability is
-3-
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013