Appeal No. 96-0319 Page 5
Application No. 08/155,519
find no reason for the skilled artisan to have been led to
employ any teaching of Roberts in Waller in any manner so as to
result in the instant claimed invention.
Appellant argues this DC limitation but the examiner’s
response is to repeat, verbatim, at pages 3-4 of the answer,
rationale from the original office action, Paper no. 2, without
addressing appellant’s argument. Then, at the bottom of page 4
to the top of page 5 of the answer, the examiner finally
responds, contending only that as to the DC terminals and the
flexible connect cord, “it would have been an obvious matter of
design choice to include such features which are well known in
the art.” We disagree. The employment of a DC voltage in the
manner claimed, resulting from a power conditioner converting
the AC power supply voltage, is more than a mere design choice.
The skilled artisan would have needed to have been led to
employ such by some teaching or suggestion in the prior art
which the examiner has not identified. Accordingly, we will
not sustain the rejection of claims 1 through 26 under 35
U.S.C. 103 based on the evidence provided by Waller and
Roberts.
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