Ex parte KLAS et al. - Page 6

          Appeal No. 1998-0512                                                        
          Application No. 08/477,238                                                  

          arrive at the claimed invention.  Uniroyal, Inc. v. Rudkin-                 
          Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir.                  
          1988), cert. denied, 488 U.S. 825 (1988).  These showings by                
          the examiner are an essential part of complying with the                    
          burden of presenting a prima facie case of obviousness.  Note               
          In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.              
          Cir. 1992).  Furthermore, "[t]hat knowledge can not come from               
          the applicant's invention itself."  Oetiker, 977 F.2d at 1447,              
          24 USPQ2d at 1446.                                                          
               We find no teaching or suggestion in Sato as to why one                
          of ordinary skill in the art would have been led to modify                  
          Brownell to capacitively couple the conductive paths through a              
          solid dielectric material.  In the Answer (pages 5-6), the                  
          examiner asserts that                                                       
               the prior art shows the general nature of how                          
               reactive and inductive capacitance can be altered,                     
               utilizing claimed techniques such as crossovers at                     
               right angles, pathways with above and below board                      
               traces.... [O]ne of ordinary skill in the art, given                   
               those teachings, would recognize the advantages of                     
               reduction in crosstalk commensurate with testing of                    
               these known principles.                                                
          The examiner's reasoning seems to lack any basis in the prior               
          art, and appears to be no more than a statement that Brownell               


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