Appeal 2007-0241
Application 09/931,296
of whether it also covers subject matter not in the prior art.”) (internal
citations omitted).
ANALYSIS
With respect to the 35 U.S.C. § 102(e) rejection of independent claims
1, 10, 16, 22, and 28 based on the teachings of Bentley, the Examiner
indicates (Answer 4-5) how the various limitations are read on the disclosure
of Bentley. In particular, the Examiner directs attention to the illustration in
Figure 10 of Bentley, as well as the disclosure at column 2, lines 20-29,
column 15, lines 10-15, and column 17, lines 35-45 of Bentley.
In our view, the Examiner’s analysis is sufficiently reasonable that we
find that the Examiner has as least satisfied the burden of presenting a prima
facie case of anticipation. The burden is, therefore, upon Appellants to come
forward with evidence and/or arguments which persuasively rebut the
Examiner’s prima facie case. Only those arguments actually made by
Appellants have been considered in this decision. Arguments which
Appellants could have made but chose not to make in the Briefs have not
been considered and are deemed to be waived [see 37 C.F.R.
§ 41.37(c)(1)(vii)].
Appellants’ arguments in response assert that the Examiner has not
shown how each of the claimed features is present in the disclosure of
Bentley so as to establish a prima facie case of anticipation. Appellants’
arguments (Br. 6-7; Reply Br. 3-4) focus on the contention that, in contrast
to the language of the appealed independent claims which set forth that
software programs are stored in a database, Bentley is storing engineering
models in a database.
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