Appeal No. 1997-3996
Application 08/519,952
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992)(citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)).
"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, Inc., 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)).
We find that the examiner, at pages 3 to 5 of the Answer, has met his burden of establishing a
prima facie case of obviousness. However, appellant has successfully rebutted the prima facie case
presented by the examiner and has shown that hindsight was used by the examiner in combining the
applied prior art in order to reconstruct appellant’s invention of claims 1 to 18. Accordingly, we cannot
sustain the rejection of claims 1 to 18 under 35 U.S.C. § 103.
In the Answer (page 4), the examiner correctly explains what is taught by appellant’s admitted
prior of Figure 5 and pages 1 to 3 of the specification and states that the admitted prior art fails to teach
"synchronization of the frequencies of the bias oscillators and a reference clock signal source in the
external circuit providing a reference clock signal at a fixed frequency to the oscillator unit" (Answer,
page 4). The basis for the examiner’s statement is flawed because what is actually missing from the
admitted prior art to meet representative claim 1 consists of what is actually recited in the claims on
appeal. In this case, claim 1 calls for synchronization of the oscillation operation of an oscillator circuit
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