Appeal No. 2007-0464
Application 09/964,874
at startup and subsequent resetting of the tracking offset at a later time. It was incumbent upon
the applicant to rebut the prima facie case.
All the applicant has done, however, is to argue that the examiner did not specifically
explain where the disclosure for setting and resetting an offset value exists in Otsuka. According
to the applicant, the examiner merely cited to Paragraphs 23-33 of Otsuka-English and that that
was not specific enough. In the Examiner’s Answer, the citation of support was narrowed to
Paragraphs 23-27 of Otsuka-English and the applicant in the reply brief still regards that as not
specific enough. The applicant does not submit that Otsuka does not disclose what the examiner
found it discloses and has not discussed the portions of the reference cited by the examiner as
disclosing the feature. The sole argument put forth is that the examiner provided no explanation
as to why the cited portions of the reference meet the claim features at issue.
While an examiner must explain the rejection and offer up a rationale in support of the
rejection, the explanation does not have to be in a particular form and style that suits the
applicant’s preference, and the citation of support to a reference need not have the same accuracy
and precision as that possessed by a cartographer. Paragraphs 23-25, as reproduced in Fact
Findings 19 and 20, reasonably apprise the applicant of the examiner’s position, and Paragraphs
23-27 together covering only thirty-one lines of text are not so voluminous as to constitute
excessively burdensome material for the applicant to review. The relevance of Paragraphs 23-25
is self-evident even upon only a cursory review of the same.
The applicant cites a Board decision in Appeal No. 2003-0121 in which the panel
determined that the examiner did not adequately indicate how the asserted prior art rendered the
rejected claims unpatentable. The adequacy of the explanation has to be determined on a case by
case basis. In this case, the explanation given by the examiner was sufficient. There is much in
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