Appeal No. 95-3917
Application 07/861,144
pages 17-19) is not persuasive because the limitations said to be not shown or suggested appear to be
clearly shown. See 37 CFR § 1.192(c)(6)(iii) (appellants required to identify "specific limitations in the
rejected claims which are not described in the prior art relied upon in the rejection"). Accordingly, we
sustain the rejection of claims 1, 7, 20, and 22.
We normally address only those differences specifically argued by appellants. Cf. Baxter Travenol
Labs., 952 F.2d at 391, 21 USPQ2d at 1285 ("It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.");
Wiseman, 596 F.2d at 1022, 201 USPQ at 661 (arguments must first be presented to the Board).
However, since independent claims 8 and 14 clearly require "series-connected passive elements" and since
Kalaf shows parallel-connected capacitors and the examiner does not address the obviousness of this
difference, we are compelled to reverse the rejection of claims 8, 13-14, and 19.
CONCLUSION
We have reversed the rejection of claims 1-22 under 35 U.S.C. § 112, second paragraph.
We have sustained the § 102(b) rejection of claims 1-4, 6, 8, 11-12, 14, 17-18, and 20-21 over
Merrick, the § 103 rejection of claim 5 over Merrick and Hochschild, and the § 103 rejection of claims
1, 7, 20, and 22 over Kalaf.
We have reversed the § 103 rejection of claims 8, 13-14, and 19 over Kalaf.
No time period for taking any subsequent action in connection with this appeal may be extended
under 37 CFR § 1.136(a).
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