Ex Parte Simpson - Page 3

                  Appeal 2007-1602                                                                                         
                  Application 09/940,596                                                                                   
                         Regarding the above rejection, Appellant contends1 that Tuchitoi does                             
                  not fairly teach or suggest sending a command to a system to launch the                                  
                  browser or service to a particular network location if a predetermined event                             
                  is determined to have occurred, as recited in claim 1.  (Br. 4, Reply Br. 4.)                            
                  In response, the Examiner contends that Tuchitoi’s disclosure of launching a                             
                  pop-up message to indicate that a print job has reached a predetermined                                  
                  status teaches Appellant’s claimed launching of a browser or service to a                                
                  network location upon the occurrence of a predetermined event.  (Answer 3,                               
                  7 and 8.)                                                                                                
                                                         ISSUE                                                             
                         The pivotal issue in the appeal before us is as follows:                                          
                  Has Appellant shown2 that the Examiner failed to establish that the                                      
                  disclosure of Tuchitoi anticipates the claimed invention under 35 U.S.C.                                 
                                                                                                                          
                  1 This decision considers only those arguments that Appellant submitted in                               
                  the Appeal and Reply Briefs.  Arguments that Appellant 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)(eff. Sept. 13, 2004).  See also In re Watts, 354                              
                  F.3d 1362, 1368, 69 USPQ2d 1453, 1458 (Fed. Cir. 2004).                                                  
                         Appellant did not provide separate arguments with respect to the                                  
                  rejections of claims 2 through 14 and as being anticipated by Tuchitoi.                                  
                  Therefore, we select independent claim 1 as being representative of these                                
                  claims.  Claims 2 through 14 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).                                                      
                         2  In the examination of a patent application, the Examiner bears the                             
                  initial burden of showing a prima facie case of unpatentability.  In re                                  
                  Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).  When                                 
                  that burden is met, the burden then shifts to the applicant to rebut.  Id.; see                          
                  also In re Harris, 409 F.3d 1339, 1343-44, 74 USPQ2d 1951, 1954-55 (Fed.                                 
                  Cir. 2005) (finding rebuttal evidence unpersuasive).  If the applicant                                   
                  produces rebuttal evidence of adequate weight, the prima facie case of                                   
                                                            3                                                              

Page:  Previous  1  2  3  4  5  6  7  8  9  Next

Last modified: September 9, 2013