Appeal No. 95-4959
Application 08/145,722
devices so that a recitation of this feature is not necessary [reply brief, page 2]. We find ourselves in
agreement with the examiner’s position.
Claim 1 recites two RTDs in parallel preceded by a preamble of “[a] multiple peak resonant
tunneling diode device comprising:” [note copy of claim 1 above]. This preamble adds nothing
structural to the parallel RTDs recited in the body of the claim. Capasso clearly teaches two RTDs
connected in parallel. In fact, Capasso clearly describes the functionality of his device as being two
RTDs in parallel [note column 4, lines 43-46 and column 5, lines 6-8]. It does not matter what
appellants call their device since the elements recited in the body of the claim are clearly disclosed by
Capasso. In other words, an old combination of elements cannot be made patentable by simply giving
the combination a new name. The two diodes recited in claim 1 are clearly present in the Capasso
device.
We also agree with the examiner that there is nothing in the preamble of claim 1 which requires
that the device have only two terminals. Although appellants argue that a diode has only two terminals,
this limitation does not extend to a diode device. Each of the RTDs in Capasso has two terminals just
as in appellants’ invention. When a plurality of these two-terminal diodes are interconnected to
generate a multiple peak output function, there is no requirement that the
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