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Ex parte SHINBASHI et al. - Page 5
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Board of Patent Appeals and Interferences > 1997 > Ex parte SHINBASHI et al. - Page 5
Appeal No. 95-3710
Application 07/621,005
paragraph. See In re Hyatt, 708 F.2d 712, 715, 218 USPQ 195, 197
(Fed. Cir. 1983) and In re Borkowski, 422 F.2d 904, 909, 164 USPQ
642, 645-46 (CCPA 1970).
On page 3 of the answer, the Examiner states that it is not
clear whether claim 6 recites a switching unit because of the
claim language "the switching unit, when mounted at one of the
second locations." When reviewing the whole claim in light of
the specification, it is clear that the claim is directed to an
electrical wiring arrangement and the switching unit is not a
positively recited element of the claim. The claim is only
directed to a wiring arrangement which is capable of
accommodating a switching unit but does not require a switching
unit to be an element of the claim. The indefiniteness is
reversed.
In regard to the rejection under 35 U.S.C. § 103, the
Examiner has failed to set forth a prima facie case. It is the
burden of the Examiner to establish why one having ordinary skill
in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
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Last modified: November 3, 2007
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