Monday, November 10, 2008

Limitation Missed by Examiner

Neither Bischof nor Schumacher, either separately or in combination, teach or suggest, e.g., the claim 11 language: a module for verifying the set of tokens as internally consistent, the verifying comprising considering marking information added to the tokens. Applicant’s representative has carefully read the Office action and cannot locate a rejection of the above portion of the claim. Applicant respectfully submits that this omission amounts to a failure to articulate a prima facie case of unpatentablity and the burden to rebut this “rejection” has not yet shifted to the Applicant. For at least this reason, claim 18 is in condition for allowance.

Initially, it is noted that the Office has not identified where in either Smith or Jones an alleged anticipatory teaching is to be found. Thus, the Office has failed meet its evidentiary burden and provide a prima facie case against claim 1. For at least this reason, claim 1 is in condition for allowance.


Additionally, Applicant has carefully reviewed the remainder of patent to Smith, and the patent to Jones and finds no teaching of “a widget” in either reference either individually or in combination. Thus, for at least this reason, neither Smith nor Jones teach or suggest independent claim 1.
Accordingly, favorable reconsideration and withdrawal of the rejection of independent claim 1 under 35 U.S.C. §103 are respectfully requested.
In the event that the Office maintains the rejection of independent claim 1 under 35 U.S.C. §102, Applicant respectfully requests that the Office, in the interests of compact prosecution, identify on the record and with specificity sufficient to support a prima facie case of anticipation, where in the Smith patent the subject feature of independent claim 1 of “a widget” is alleged to be taught.

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