Appeal No. 96-0086
Application 07/979,607
might agree that the reference taught that claimed element since radio communication is a type, or
subset, of “electromagnetic coupling.” But, in our view, it is blatant hindsight for the examiner to point
to a general disclosure of “electromagnetic coupling” in the reference and conclude that the reference
teaches or suggest the use of radio communication to test integrated circuits.
The only common element we can find between the instant claimed invention and that disclosed
by Katayama is that Katayama has an integrated circuit. Katayama lacks disclosure of more claimed
elements and/or steps than it teaches. It would have been better had the examiner not focused only on
the integrated circuit aspect of the claimed invention when selecting a reference and, instead, had
located a reference or references disclosing remote testing by radio communication.
The examiner’s belated reliance on the Fujioka reference , at page 6 of the answer, for a2
teaching of radio frequency coupling is improper. First, while the reference refers to data transmitted
and received by radio waves, there is no indication of any testing achieved thereby. More importantly,
this reference forms no part of the statement of the outstanding rejection against the claims and there
would appear to be no excuse for not positively including the reference in the statement of the rejection.
In re Hoch, 428 F.2d 1341, 1142 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
2U.S. Patent No. 5,212,373, issued May 18, 1993 (filed Oct. 31, 1990), of record in the
application file.
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