Ex Parte Rupich et al - Page 3


                Appeal 2007-2236                                                                                   
                Application 10/991,738                                                                             
            1                 1.  Specification, including original claims.                                        
            2                 2.  Drawings.                                                                        
            3                 3.  The Supplemental Appeal Brief filed 28 August 2006.                              
            4                 4.  The Examiner’s Answer entered 17 November 2006.                                  
            5                 5.   The Reply Brief failed 22 January 2007.                                         
            6                 6.   Kobayashi.                                                                      
            7                 7.   Mizuta.                                                                         
            8                 8.   Gupta.                                                                          
            9                 9.   PTO bibliographic data sheet for the application on appeal.                     
          10                  10.  Claims 89-96 on appeal.                                                         
          11                  11.  Publication 2006/0051600 (09 Mar. 2006) (specification of                       
          12    application on appeal.                                                                             
          13                                                                                                       
          14           C.  Issues                                                                                  
          15           As the appeal reached the Board, there are two principal issues.                            
          16           The first issue was whether Rupich has sustained its burden of                              
          17    showing that the Examiner erred in rejecting the claims 89-91 on appeal as                         
          18    being unpatentable under 35 U.S.C. § 103(a) over Gupta and Mizuta.                                 
          19    The second issue was whether Rupich has sustained its burden of                                    
          20    showing that the Examiner erred in rejecting the claims 92-96 on appeal as                         
          21    being unpatentable under 35 U.S.C. § 103(a) over Gupta, Mizuta and                                 
          22    Kobayashi.                                                                                         
          23           We do not reach the two issues because we find the claims to be                             
          24    indefinite and we also find the enabling disclosure not to be commensurate                         
          25    in scope with what we think Rupert regards as its invention.                                       
          26                                                                                                       

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