Appeal No. 95-3876
Application 08/222,009
enabling voltage is applied and removed. The IGBT gate is not
itself part of the control means; instead it is part of the
IGBT, which is a separately limiting element of claim 14.
Consequently, we must construe the control means of claim 14
to be subject to paragraph six unless the intrinsic evidence
of record indicates otherwise.
The record is, as is unfortunately all too typical
in such cases, devoid of any direct analysis by Appellants or
the examiner about the applicability of paragraph six. Timing
may partly explain this silence because the final office
action issued before the watershed decision In re Donaldson
Co., 16 F.3d 1189, 1193, 29 USPQ2d 1845, 1848 (Fed. Cir.
1994)(in banc), which arguably changed practice under
paragraph six. Whatever the reason, Appellants never
expressly invoke paragraph six or the analysis of Donaldson
Co. in the record. Appellants' silence, however, is just one
item in our analysis of the claim. As previously noted, we
must presume that paragraph six applies absent clear
indications to the contrary. Silence does not overcome the
presumption. Cf. Digital Biometrics, Inc. v. Identix, Inc.,
149 F.3d 1335, 1344, 47 USPQ2d 1418, 1424 (Fed. Cir. 1998)
- 33 -
Page: Previous 26 27 28 29 30 31 32 33 34 35 36 37 38 39 40 Next
Last modified: November 3, 2007