Appeal No. 1997-3444
Application 08/268,728
Tsukada, the anticipation rejection of claims 21, 22, and 35
is reversed.
Smith
The Examiner finds that Smith has a transistor and means
for biasing including a means for varying "all connected and
operating similarly as recited by Applicant" (EA4) and "that
since the transistor operation claimed by Applicant is
inherent to all bipolar transistors and since the reference
can utilize any reasonable biasing, clearly the circuit to
Smith would have such operation" (EA4).
As discussed in connection with the Handbook and Tsukada,
inherency of the claimed subject matter is not established by
a transistor and a bias circuit. We have reviewed Smith and
do not see how it inherently discloses the claimed subject
matter. Moreover, the Examiner's statement about "reasonable
biasing" suggests that the circuit is only "capable of" being
biased to operate as claimed. This is improper reasoning for
an anticipation rejection. See Mills, 916 F.2d at 682,
16 USPQ2d at 1432. Because the Examiner has failed to carry
his burden of proof to show inherency of the limitations of
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