Ex parte SAKUI et al. - Page 9




          Appeal No. 1997-3444                                                        
          Application 08/268,728                                                      

          and 'means for biasing (V , R , V  and R )' including a 'meansCC  C  BB      B                                   
          for varying (V  and R )', all connected and operatingBB     B                                                      
          similarly as recited by Applicant" (EA3).  This statement is                
          conclusory and makes no attempt to show how the circuit                     
          operates as claimed.  Figure 3-1 is a general transistor                    
          circuit showing leakage currents that can operate in all modes              
          depending on the bias conditions.  Because it is necessary to               
          provide some motivation to operate the circuit in a certain                 
          way, this circuit is not an anticipation.  See In re Mills,                 
          916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990)                    
          ("While Mathis' apparatus may be capable of being modified to               
          run the way Mills' apparatus is claimed, there must be a                    
          suggestion or motivation in the reference to do so.").                      
          Nevertheless, since figures 2-17 (page 42) and 9-5a (page 291)              
          show circuits for avalanche mode operation, we analyze these                
          circuits.                                                                   
               The Examiner finds "[t]he fact that the reference teaches              
          the exact operation presently claimed, whether in the positive              
          or negative, can only be seen to be anticipation of the                     
          invention" (EA6) and "the mere fact that this reference                     
          teaches the 'latch-up' phenomenon can only be seen by one                   

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