Appeal No. 95-3001
Application No. 08/195,844
dielectric 11 smaller than that of U-shaped holding parts 21/31,”
and “[t]he Japanese ’816 document, like the Yoshinaga patent,
discloses a capacitor dielectric having a second dimension which
is smaller than that of U-shaped terminals 5a/6a.” With respect
to the examiner’s statement that “Japan (figs. 2-4) shows the
capacitor substrate is wider than the common (ground) terminal,”
appellant argues (Brief, page 10) that the T-shaped grounding
terminal 7 in the Japanese reference does not correspond to the
claimed input and output terminals, and that the T-shaped
grounding terminal does not include cup-shaped portions as
required by the claims on appeal. In rebuttal to the examiner’s
position concerning optimization, appellant argues (Brief,
page 9) that:
[T]he Yoshida, Yoshinaga and Japanese ’816 documents,
taken either alone or in combination, at best, merely
disclose sizing a dielectric substrate as a function of
circuit requirements. Those skilled in the art
desiring increased capacitance would have been
motivated to laterally increase the dielectric or
capacitor electrode size, or increase the size of the
overall device (i.e., maintain the relative dimensions
of the terminals and the dielectric substrate).
We agree. The obviousness rejection is reversed because nothing
in the record supports the examiner’s position that the skilled
artisan seeking optimum capacitance would have sized the
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