Appeal No. 2006-3329
Application No. 10/637,989
determined on the totality of the record, by a preponderance of evidence with due
consideration to persuasiveness of argument. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner suggests, at page 5 of the Answer, there is no art recognized
definition for the term cartridge library because the examiner has never found a
conclusive definition as to what a cartridge library is in the art. The allegation seems to
relate to an inability to determine the scope of the claim (i.e., 35 U.S.C. ' 112, second
paragraph), rather than to how the prior art may be applied against the claim.
Moreover, the allegation is in the form of an irrebuttable presumption. The rejection has
not provided any evidence in support of the position, which evidence might be evaluated
by appellants for arguments or evidence in rebuttal. Although the examiner may have
personal knowledge of one or more references that would tend to show that the
examiner=s claim interpretation is appropriate, the only proper evidence we have for the
artisan=s understanding of the recitation in controversy consists of the instant
specification and Owens, which provide better support for appellants= position than the
examiner=s.
As such, because we make our determinations based on the record that the
examiner and appellants have provided us, we conclude that the rejection fails to set
forth a case for prima facie anticipation of the subject matter of instant claim 7. The
rejection is thus not sustained.
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