Ex parte PORTER et al. - Page 10




          Appeal No. 1996-3126                                                        
          Application No. 08/300,586                                                  


          voltage is indeterminable.  Accordingly, we must reverse the                
          rejection of claims 5 and 25.                                               
               For claim 54, the examiner's sole explanation (Final                   
          Rejection, page 4, and Answer, page 6) is that the voltage                  
          waveforms of both Sokal and Krauss show that the maximum                    
          switch voltage can be reduced during the response time period.              
          The examiner concludes that the means for reducing the voltage              
          is inherent to the circuit.  The examiner, however, has                     
          ignored the limitation that such reduction must occur "while                
          maintaining said level of power to said load."  Further, the                
          examiner has failed to identify in the references appellants'               
          disclosed means for accomplishing such reduction of the                     
          maximum switch voltage, in accordance with In re Donaldson                  
          Co., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir. 1994).  "It is                 
          axiomatic that anticipation of a claim under § 102 can be                   
          found only if the prior art reference discloses every element               
          of the claim."  In re King, 801 F.2d 1324, 1326, 231 USPQ 136,              
          138 (Fed. Cir. 1986).  See also Lindemann Maschinenfabrik v.                
          American Hoist and Derrick, 730 F.2d 1452, 1458, 221 USPQ 481,              
          485 (Fed. Cir. 1984).  Since neither Sokal nor Krauss                       
          discloses the claimed means, we cannot sustain the                          
                                         10                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007