Appeal No. 1997-3444 Application 08/268,728 and 'means for biasing (V , R , V and R )' including a 'meansCC C BB B for varying (V and R )', all connected and operatingBB B similarly as recited by Applicant" (EA3). This statement is conclusory and makes no attempt to show how the circuit operates as claimed. Figure 3-1 is a general transistor circuit showing leakage currents that can operate in all modes depending on the bias conditions. Because it is necessary to provide some motivation to operate the circuit in a certain way, this circuit is not an anticipation. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990) ("While Mathis' apparatus may be capable of being modified to run the way Mills' apparatus is claimed, there must be a suggestion or motivation in the reference to do so."). Nevertheless, since figures 2-17 (page 42) and 9-5a (page 291) show circuits for avalanche mode operation, we analyze these circuits. The Examiner finds "[t]he fact that the reference teaches the exact operation presently claimed, whether in the positive or negative, can only be seen to be anticipation of the invention" (EA6) and "the mere fact that this reference teaches the 'latch-up' phenomenon can only be seen by one - 9 -Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007