Appeal No. 97-2481
Application No. 08/480,964
necessarily be enhanced by simply filling the area of bores B 1
and B2 formerly filled by air with ferrite material" (paragraph
11), and "it is not necessarily true that providing more ferrite
material closer to the connector would necessarily result in
better EMI shielding characteristics" (paragraph 12). Assuming
these statements to be correct, it appears that achieving the
claimed "substantial increase" in inductance must involve more
than merely placing a rectangular cross-section connector in a
rectangular cross-section bore in the ferrite barrel, but this is
all that is required both by the claims and by appellant’s
disclosure. Since the claims do not include any restriction on
the size of the connector relative to the size of the bore, and
it appears from Mr. Hanna’s statement that placing a rectangular
cross-section connector in a rectangular cross-section bore would
not necessarily result in increased inductance, the evidence of a
five-fold increase in inductance is not commensurate with the
scope of the claims, and therefore does not rebut the prima facie
case of obviousness.
Mr. Hanna’s opinions to the effect that the claimed subject
matter is not suggested by Anderson is entitled to some weight.
In re Lindell, 385 F.2d 453, 456, 155 USPQ 521, 524 (CCPA 1967).
Nevertheless, while he recognizes that Anderson discloses that
the corresponding shapes of the holes and contact members prevent
12
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: November 3, 2007