Ex parte MONTI et al. - Page 14





              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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