Appeal No. 1997-2340 Page 7
Application No. 08/329,687
circuit having multiple parallel circuits ...." Also
similarly, claims 7-9 specify in pertinent part the following
limitations: "a detection circuit which detects a self-firing
of either the switching element of said first current path or
the switching element of said second current path ...."
The specification defines self-firing as follows.
"[E]ven when there is no ON command, VBO free thyristors 11,
12, 21, 22, 31, and 32 can fire by themselves and prevent
over-voltage." (Spec. at 2.) Reading the limitations in light
of the specification, claims 1-9 require detecting the self-
turning-on of a switching element absent an ON command.
The examiner fails to show a suggestion of the
limitations in the prior art. “Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239
(Fed. Cir. 1995)(citing W.L. Gore & Assocs., Inc. v. Garlock,
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983)). “The mere fact that the prior art may be
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