Appeal No. 1998-1651
Application No. 08/594,964
agree with appellants. From our review of Parks, Parks teaches the use of a coating on at
least a portion of the capsule to focus the stream of electrons to reduce the time
necessary to rupture. (See Parks at abstract.) Furthermore, Parks discloses that its
positioning of the capsule is so as to be a direct target for electron bombardment. (See
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Parks at Col. 3, lines 60-63.) With this teaching alone , it is our view that skilled artisans
would have been motivated to use the coating rather than move the capsule. The examiner
provides no other line of reasoning for moving the capsule beyond the examiner’s
statement that the middle would be “bombarded with the maximum amount of electrons
possible.” (See answer at page 5.) Further, Parks teaches the distribution of the
electrons arriving at the anode is initially random. (See Parks at Col. 4, lines 44-45.)
Therefore, we disagree with the examiner’s conclusion concerning the mere design choice
for the placement of the capsule relying on Parks alone and we cannot sustain the rejection
of independent claims 1 and 9 and their dependent claim 2-8 and 10-15 on Parks alone.
1We note that the examiner has cited to a number of other prior art references to support the
examiner's position that the placement of the capsule is no more that a mere design choice. While we
agree that these references do teach variations in the placement of the capsule, the examiner has not
included these teachings in the combination with Parks under 35 U.S.C. § 103 including a motivation to
combine the teachings. Therefore, we will not consider them in the above rejection. As set forth in In re
Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n. 3 (CCPA 1970), "[w]here a reference is relied on
to support a rejection, whether or not in a ‘minor capacity,' there would appear to be no excuse for not
positively including the reference in the statement of the rejection." We leave it to the examiner to apply
any or all of the references in response to this decision, if the examiner deems it appropriate and finds
proper motivation to combine the teachings.
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