Appeal No. 1997-1688
Application 08/515,752
voltage of approximately 3.3 volts, and devices that have a supply
voltage which is at a second voltage of approximately 5 volts, as
recited in the preamble of sole independent claim 28. Such being
the case, the examiner takes the position that the preamble is
merely a statement of intended use for the ESD protection circuit
which is entitled to no patentable weight in a claim such as claim
28 drawn to structure. In the reply brief, appellants take issue
with this position.
We are not persuaded by the examiner’s position. The first
recitation in the body of the claim refers to “said first voltage”
and “said second voltage”. Thus, the words in the preamble
provide antecedent basis for terms used in the body of claim 28
and are necessary to give meaning to the claim. Gerber Garment
Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 689, 16 USPQ2d
1436, 1441 (Fed. Cir. 1990).
The examiner’s position to the effect that it would have been
obvious that the protection circuits of the prior art could have
been used for dual supplies of approximately 3.3 and 5 volts and
that appellants have failed to prove otherwise is also not
persuasive. The burden is initially on the examiner to establish
a prima facie case of obviousness. Here, the examiner has not
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