Appeal No. 96-3146
Application 07/986,489
35 U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have been the result of an
obvious modification of the prior art. In our view, the
examiner has properly addressed his first responsibility, but
has not met his second responsibility.
We agree with the appellants that the examiner's
suggested combination of Ragland, Miekka, Maczuszenko and
Kuehrle is not justified, and even if it were, still does not
meet the claimed structure and the functional limitations of
claim 1. As for example, one such limitation is contained in
the last clause of claim 1, namely, "circuit means . . .
equalization of the residual potential on said image cylinder
. . . and . . . on said second electrode". As for the
patentable weight to be given to a recitation of a function in
a claim, it is well settled that there is nothing
intrinsically wrong in defining something by what it does
rather than by what it is, In re Hallman, 655 F.2d 212, 210
USPQ 609 (CCPA 1981). Here, there is sufficient structure in
the claim to warrant the presence of the functional language.
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