Appeal No. 1997-3996
Application 08/519,952
Appellant argues that none of the prior art would have suggested the power source circuit of
claims 1 to 18 (Brief, pages 18 and 22), and that any reconstruction of the reference disclosures to
produce the claimed combination would require knowledge gleaned only from appellant’s specification
(i.e., hindsight). Appellant asserts that one of ordinary skill in the art would not have been motivated to
modify the power source circuit of the admitted prior art with the references to Komori, Kikuchi, and
Driscoll since Komori teaches dual-internal recording signal bias oscillators, Kikuchi does not teach a
power source circuit or an external oscillator, and Driscoll teaches using a saw-tooth oscillator instead
of a triangle wave oscillator. We agree with appellant, and find that the examiner’s prima facie case of
obviousness has been rebutted.
Once the examiner's prima facie case has been successfully rebutted, it is the examiner’s
responsibility to respond to appellant’s rebuttal. In this case, the examiner's response is in his
"Response to Argument" section of the Answer (Answer, page 6). Our careful review of page 6 of the
Answer reveals that other than to make generalizations about the state of the law with respect to
obviousness rejections, the examiner has failed to answer any of appellant’s specific arguments with
respect to the motivation for combining the applied prior art and the disparate teachings of the four
applied references. Specifically, the examiner has failed to address the fact that Komori concerns two
internal recording signal bias oscillators, Kikuchi concerns quartz and voltage controlled oscillators
which are not even in a power source circuit, and Driscoll concerns a variable sawtooth wave form
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