Ex parte KIM - Page 10

          Appeal No. 96-3211                                                            
          Application 07/928,717                                                        
               11. Applicant challenges the rejection of claims 2-4 for                 
          failing to account for the Applicant's specific circuit                       
          components.  (Paper 33 at 17.)  The relevant circuits are                     
          discussed at pages 9-12 of the specification.  The examiner                   
          relies on Niitsu and skill in the art to teach these structures,              
          but does not explain how Niitsu teaches precisely the same                    
          structures or their equivalents.  We cannot sustain the rejection             
          of claims 2-4 without a showing that Niitsu (in combination with              
          the other references) teaches these elements.                                 
               12. Claims 5, 6, and 9 require gating means.  The examiner               
          has not clearly identified a structure in Niitsu or the other                 
          references that teaches this limitation.  To the extent that the              
          examiner is suggesting that gating means are inherent in the                  
          combination (Paper 34 at 17-19), we agree with Applicant that                 
          this is not a proper application of inherency.  In re Rijckaert,              
          9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993).                     
               13. Regarding claims 13-20, Applicant again argues that the              
          combination does not teach or suggest his particular circuits.                
          (Paper 37 at 11.)  Again, the examiner apparently relies on                   
          inherency to teach these elements.  (Paper 34 at 18-19.)  Niitsu,             
          by itself or in combination with Folsom and Suzuki, lacks                     
          sufficient detail to determine whether its structures are the                 
          same as or equivalent to the structures Applicant discloses in                

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