Appeal 2007-1247
Application 10/222,014
Here, Appellants argue claims 1-5 and 7-11, which are subject to the
same ground of rejection, as a group. (App. Br. 5-7). We select claim 1 as
the sole claim on which to decide the appeal of the group.2
"Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween." Ex Parte Filatov, No. 2006-1160, 2007 WL 1317144,
at *2 (BPAI 2007). The Examiner indicated that claim 1 is deemed to be
fully met by the disclosure of Shah. (Ans. 3-4). Appellants argue that Shah
does not disclose a hardware portion but rather performs the claimed
invention using software implementation constructs (App. Br. 5).
Appellants further argue that “one of ordinary skill in the art would
recognize that the ‘hardware’ [recited in claim 1] . . . is properly considered
to be hardware logic configured to perform the recited functions without the
use of software” (Reply Br. 6). As rationales in support of this contention,
Appellants state that because of the “juxtaposition of the terms ‘hardware’
and ‘software’ in claim 1,” one of ordinary skill in the art would understand
that “Appellant intended for them to have different definitions,” and that one
of ordinary skill in the art reading the specification would understand that
the claimed feature excludes software running on underlying hardware. (Id.
7)
The Examiner finds, on the other hand, that software-implemented
components of Shah inherently run on underlying hardware and thus
constitute a “hardware portion.” (Ans. 8).
2 Although Appellants place claims 7 through 11 in a different heading in the
Appeal Brief, and repeat language from claim 7, Appellants rely on the same
argument with respect to deficiencies in Shah as applied against claim 1.
4
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