Appeal 2007-1604
Application 09/966,064
2. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over APA in view of Alcorn and further in view of
Nakagiri.
Rather than repeat the arguments of Appellants or the Examiner, we
refer to the Briefs and the Answer for their respective details.2 In this
decision, we have considered only those arguments actually made by
Appellants. Arguments which Appellants 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
Claim 10
We first consider the Examiner’s rejection of claim 10 under 35
U.S.C. § 103(a) as unpatentable over Alcorn in view of Nakagiri. 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).
2 An Appeal Brief was initially filed on Oct. 7, 2005, and an Examiner’s
Answer mailed on Dec. 30, 2005. A second Appeal Brief was filed on July
5, 2006 in response to an order from the Board to the Examiner to correct
various informalities. A second Examiner’s Answer was mailed on Nov. 22,
2006 and a Reply Brief filed Dec. 20, 2006. Throughout this opinion, we
refer to the (1) July 2006 Brief, (2) Nov. 2006 Answer, and (3) Dec. 2006
Reply Brief.
3
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: September 9, 2013