Appeal 2007-1059
Application 10/408,598
English translation of the Japanese-language reference. In this opinion we
will refer to Urino JP '938 as “Urino,” but our citations refer to the
translation (i.e., Urino US '201).
Appellants contend1 that Urino does not fairly teach or suggest a
power monitor for monitoring the power in the wavelengths of a signal. (Br.
11, Reply Br. 2.) In response, the Examiner contends that Urino’s disclosure
of monitoring waveguides for monitoring wavelengths in an optical signal or
Urino’s disclosure of a photo-detector teaches the claimed power monitor.
(Answer 7 and 8.)
We affirm.
ISSUES
The pivotal issue in the appeal before us is as follows:
(1) Have Appellants shown2 that the Examiner failed to establish that the
disclosure of Urino anticipates the claimed invention under 35 U.S.C.
1 This decision considers only those arguments that Appellants
submitted in the Appeal and Reply Briefs. Arguments that Appellants could
have made but chose not to make in the Briefs are deemed to have been
waived. See 37 C.F.R. § 41.37(c)(1)(vii)(2005). See also In re Watts, 354
F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).
Appellants did not provide separate arguments with respect to the
rejection of 1 through 16 as being anticipated by Urino. Therefore, we select
independent claim 1 as being representative of the claimed invention.
Claims 2 through 16 consequently fall together with representative claim 1.
See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991). See also 37 C.F.R. § 41.37(c)(1)(vii).
We rely on and refer to the Examiner’s Answer mailed on June 16,
2006.
2 In the examination of a patent application, the Examiner bears the
initial burden of showing a prima facie case of unpatentability. In re
3
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