Appeal No. 96-1560
Application 08/084,366
801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d
989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
With respect to independent claims 26, 34 and 49, and notwithstanding the many
limitations of the claims ignored by the examiner, appellants make only a single relevant
argument in support of their position that Powell and Ertz do not anticipate the invention of
the claims. Appellants make several arguments which compare the disclosure of their
invention with Powell and Ertz, but the disclosed invention is not the measure of
patentability. The only relevant argument made by appellants is that neither Powell nor Ertz
supports the claimed recitation that the power conversion means (claim 26) outputs a
predetermined voltage which is selectable as a DC voltage or an AC voltage, or the
plurality of AC converters (claims 34 and 49) are selectively operable as AC to DC or AC
to AC converters [brief, pages 13-14]. Appellants argue that the outputs in Powell and Ertz
are AC signals only and are not selectable to be AC or DC.
The examiner argues that because claim 26 refers to a DC voltage or an AC voltage,
the claim reads on the Powell and Ertz disclosures of an AC voltage. Although the
examiner is correct that alternative language can be met by prior art showing any of the
alternative choices, the examiner has ignored an important condition on the alternatives
set forth in independent claims 26, 34 and 49. Each of independent claims 26, 34 and
49 recites that at least one element of the combination is selectively operable in order to
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007