Appeal No. 97-2481
Application No. 08/480,964
claim 1 and 2, the electrical connector of claims 1 and 2 reads
on that recited in patent claim 3. Cf. In re Goodman, 11 F.3d
1046, 1052, 29 USPQ2d 2010, 2016 (Fed. Cir. 1993). As for the
recitations of a "substantial increase" in inductances in claims
1 and 2, it is noted that the disclosure of the patent is the
same as that of the present application, and therefore, insofar
as can be determined, any properties of the filter connector
recited in claims 1 and 2 must be inherent in the filter
connector defined in the patent claim.
Conclusion
The examiner’s decision to reject claims 1 and 2 under
35 U.S.C. § 102(f) is reversed, and under 35 U.S.C. § 103 is
affirmed.
Claims 1 and 2 are rejected pursuant to 37 CFR § 1.196(b) on
the bases of (a) 35 U.S.C. § 112, first paragraph (enablement),
(b) 35 U.S.C. § 112, second paragraph, and (c) obviousness-type
double patenting.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains new grounds of rejection
pursuant to 37 CFR § 1.196(b) (amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
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