Appeal No. 95-4959
Application 08/145,722
completed device be limited to only two terminals. Appellants are unjustifiably reading their own
preferred embodiment into the claim. It should also be noted that a claimed recitation of
two terminals can be anticipated by a disclosure of more than two terminals since a small claimed
number is encompassed by a disclosed larger number.
Thus, we agree with the examiner that appellants’ arguments are not commensurate in scope
with the recitations of the claims. We conclude that the invention as recited in claim 1 is fully met by the
disclosure of Capasso. Therefore, we sustain the rejection of claims 1, 3, 5 and 6 under 35 U.S.C. §
102.
We now consider the rejection of claim 2 under 35 U.S.C. § 103 as being unpatentable over
Capasso in view of Ando. The examiner has pointed out what each of the prior art references teaches,
has pointed out the differences between the prior art and the claimed invention, and has reasonably
indicated how and why these references would have been modified and/or combined to arrive at the
claimed invention [answer, pages 5-6]. The examiner has, therefore, at least satisfied his burden of
presenting a prima facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). The burden is, therefore, upon appellants to come forward with
evidence or arguments which persuasively rebut the examiner's prima facie case of obviousness.
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