Appeal No. 2007-0464
Application 09/964,874
offset value and/or the tracking offset value. Appeal Brief at Page 7, Lines 4-12. Although a
few lines later on the same page in the appeal brief the applicant added the words “in the manner
described in the claim,” a full reading of the argument reflects the applicant’s clear position that
it is because the examiner did not show that Otsuka discloses “any” setting and resetting
whatsoever that Otsuka cannot possibly disclose setting and resetting in the manner described in
the claim. On Page 8 of the appeal brief the applicant restates that the examiner has not shown
that Otsuka discloses setting and resetting under the conditions specified in the claim.
It suffices to say only that the applicant’s argument is general and never identifies what
manner or condition for setting and resetting is not met by Otsuka. Indeed, as noted above there
is a clear explanation in the appeal brief that setting and resetting an offset in the manner
required by the claim are not met by Otsuka only because the examiner has not shown that
Otsuka discloses any setting and resetting of an offset value. We decline to look on our own for
manners and conditions in the claim, unspecified by the applicant, which may not be met by
Otsuka. If there is a missing feature, the argument has been waived.
The examiner cited to Paragraphs 23-27 of Otsuka-English as supporting the
determination that the features of setting a tracking offset value at startup and subsequent
resetting of the tracking offset value are met. We have quoted Paragraphs 23-25 of Otsuka-
English in Fact Findings 18 and 19, and find that those portions of Otsuka-English reasonably
convey the setting of a tracking offset at startup and subsequent resetting of the tracking offset at
a later time. The word “Next” at the beginning of Paragraph 24 reasonably indicates that the
setting of the offset value as described in Paragraph 23 is in a category all by itself, separate
from all the subsequent resetting as described in Paragraphs 24 and 25. The examiner has set
forth at least a prima facie case that Otsuka discloses an initial setting of the tracking offset value
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