Appeal 2007-1440
Application 09/920,481
3. Claims 7, 19, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gifford in view of Talati and further in view of
Joseph.
4. Claims 8-12, 20, 21, 29, and 30 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gifford in view of Talati and further in
view of Schuster.
Rather than repeat the arguments of Appellant or the Examiner, we
refer to the Briefs and the Answer for their respective details. In this
decision, we have considered only those arguments actually made by
Appellant. Arguments which Appellant could have made but did not make
in the Briefs have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii).
OPINION
We first consider the Examiner’s rejection of claims 1, 2, 4-6, 13, 14,
16-18, 22, 23, 25-27, and 41 under 35 U.S.C. § 103(a) as unpatentable over
Gifford in view of Talati. In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner must make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’ . . . . [H]owever, the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
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