Appeal No. 97-3082
Application No. 08/650,023
‘feedback connection’ is connected in the circuit” [answer-
page 5]. If the claim language is so indefinite that the
examiner cannot understand the claimed subject matter, then it
appears that a prior art rejection should not have been made
since it would be impossible to apply the teachings of the
prior art to the claim language. If a prior art rejection is
to be made to the extent the claimed subject matter is
understood, then the examiner may not choose to ignore any
limitations appearing in the claims. However, it is clear
from the examiner’s response to appellant’s arguments that the
examiner did, indeed, read out the “feedback connection
absent...” and “without using feedback...” limitations from
the claims in applying the reference to the claimed subject
matter. Therefore, we will not sustain the rejection of
claims 1 and 4 under 35 U.S.C. § 102(b).
We also find it strange that the examiner questions where
“the ‘feedback connection’ is provided” in the circuit
[answer-top of page 5] and “how such a ‘feedback connection’
is connected in the circuit” [answer-bottom of page 5]. The
claims clearly call for there to be no feedback connection so
how can the examiner question where and how such a connection
5
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Last modified: November 3, 2007