Ex Parte Schreiber et al - Page 12



            Appeal 2007-3126                                                                               
            Application 10/359,275                                                                         

            73 F.3d 1085, 1090 (Fed. Cir. 1995) (the Browning Hi-Power handgun does not                    
            teach away from the claimed invention; while it fails to disclose a converging                 
            frame, it does not warn a person against using convergence); Icon Health and                   
            Fitness, 496 F.3d at 1381 (“A reference may be said to teach away when a person                
            of ordinary skill, upon reading the reference, would be discouraged from following             
            the path set out in the reference, or would be led in a direction divergent from the           
            path that was taken by the applicant.”) (citation omitted).                                    
                  For the foregoing reasons, Appellants have not demonstrated any error in the             
            Examiner’s rejection of independent claims 1 and 21.                                           
            B.  The dependent claims                                                                       
                  Appellants’ argument that the rejection should be reversed with respect to               
            dependent claims 2, 4, 5, and 10 because “the rejection fails to provide any                   
            indication of where the subject matter recited in these claims is believed to be               
            found in Abdelgawad and Zunick” (Br. 4-5) is also unconvincing.  Appellants were               
            in a position to address the merits of the rejection of these claims.  Neither                 
            reference is complex and the scope of these claims is not at issue (claim 2 recites a          
            “fitting” and “pin socket assembly”; claim 4 recites “radially-wound epoxy glass”;             
            claim 5 recites “a cross pin”; and claim 10 recites a “vacuum fault interrupter”).  In         
            effect, Appellants are simply noting what the claims recite, which does not                    
            constitute an argument on the merits.  See 37 C.F.R. § 41.37(c)(1)(vii) (2006) (“A             
            statement which merely points out what a claim recites will not be considered an               
            argument for separate patentability of the claim.”).                                           


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