Appeal No. 1997-3179
Application No. 08/244,286
benefit that would be derived from doing so. More compelling
is the fact that page 3, lines 22-25, of appellant's
specification teaches that the two ferrite-core inductors form
the second stage of the filter and function to suppress high
frequency (RFI). Therefore, assuming arguendo that it would
have been obvious to one skilled in the art to eliminate the
capacitors from the invention of Weissner, the remaining
circuit of Weissner would be incapable of suppressing high
frequencies because Weissner's circuit requires condensers
(capacitors) to suppress the high frequencies.
Consequently, we reverse the examiner's rejection of
claims 16 and 19-22 because (1) the examiner's rejection fails
to point to some teaching, suggestion, or motivation found
either in the prior art relied upon or in knowledge generally
available to one of ordinary skill in the art that supports
eliminating the capacitors from the circuit of Weissner; In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988); In re Jones, 958 F.2d 347, 351, 21 USPQ2d 1941, 1943-4
(Fed. Cir. 1992); and (2) removing the capacitors from the
circuit taught by Weissner
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