Appeal 2007-1557
Application 10/943,536
from one or more capacitors in the event of loss of primary power supply without
operating electrical switches, this is consistent with giving the phrase "without
switching" its broadest reasonable construction in light of the Specification as it
would be interpreted by one of ordinary skill in the art. The Examiner argues that
"without switching" should mean without switching performed by an operator
(Answer 6). This is not consistent with the plain language of the claim and the
Specification.
Thus, those skilled in the art would understand what is claimed, particularly
the meaning of “without switching" in claim 13, when the claim is read in light of
the Specification. Accordingly, we reverse the rejection of claim 13 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which applicant regards as the
invention.
OBVIOUSNESS
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the initial
burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). Only if this initial burden
is met does the burden of coming forward with evidence or argument shift to the
appellant. Id. at 1445, 24 USPQ2d at 1444. See also Piasecki, 745 F.2d at 1472,
223 USPQ at 788. Obviousness is then determined on the basis of the evidence as
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