Appeal No. 1997-3211
Application No. 08/457,789
reference. Since the prior art rejection based on Farrell is2
the only outstanding rejection on appeal, we must reverse. 3
The Examiner asserts (Answer, page 6), that, since
Exhibit A fails to show facts of a working model or test
results, evidence of an actual reduction to practice has not
been established. We do not agree. The Examiner’s
requirement of a working model is not a reasonable requirement
when the invention in question is an electrical circuit. In
our view, the circuit and timing diagrams set forth in Figures
3-9 of Exhibit A, establish a clear showing of an actual
reduction to practice of the conceived switching apparatus.
The Examiner (Answer, page 7) has further asserted a lack
of showing of a correlation between the features of the
appealed claims and the description in Exhibit A, contending
that such a showing is a prerequisite for establishing
2This Affidavit includes, as an attachment, an IBM
Invention Disclosure Document designated Exhibit A.
3Because we find that the § 131 Affidavit was sufficient
to show reduction to practice of the claimed invention prior
to the effective date of the Farrell reference, arguments as
to the merits of the Examiner’s rejection of claims 34-36, 43,
and
44 under 35 U.S.C. § 102(a) and claims 37-42 under 35 U.S.C.
§ 103 are rendered moot.
5
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