Appeal No. 1997-1111 Page 25
Application No. 08/105,899
The initial burden of establishing that Ueda and Ying
suggest the claim language of “critical gain and integral time
constant” rests with the examiner. We find that the examiner
has failed to establish that the references suggest an
integral time constant. Nor has the examiner advanced a line
of reasoning to establish that either the time constant of
Ueda or the teachings of Ying would have rendered obvious the
claimed integral time constant. The examiner’s statement
(answer, page 9) that providing Ueda with the claimed values
would allow “optimum operation of the controller” is not a
substitute for evidence. Accordingly, the rejection of claim
11 under 35 U.S.C. § 103 as unpatentable over Ueda in view of
Ying is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 9, 10, and 14 under 35 U.S.C. § 102(e) as
unpatentable over Mega is reversed. The decision of the
examiner to reject claims 6 and 18 under 35 U.S.C. § 103 as4
4We note that claims 6 and 18 were rejected under 35 U.S.C. § 103 as
unpatentable over Mega in view of appellant’s admitted prior art found on page
8 of the specification. However, in all other claims on appeal, the
(continued...)
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