Appeal No. 1998-0512 Application No. 08/477,238 could be modified to meet the claimed invention. Merely that the prior art can be modified in the manner suggested by the examiner does not make the modification obvious unless the prior art suggested the desirability of the modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-4 (Fed. Cir. 1992). Thus, the examiner has failed to establish a prima facie case of obviousness. Accordingly, we must reverse the rejection of claim 11 and its dependents, claims 12 through 14. The remaining independent claims, 15, 17, and 22, recite that the first and third and the second and fourth conductive paths are capacitively or reactively coupled "through" a dielectric substrate. The examiner states (Answer, page 7) that "[t]he phrase through the board does not require couplings from one side of the board to the other side of the board." We disagree. The word "through" conventionally means from one side or surface to the other. Further, claims are to be interpreted in light of the specification, and "through the board" is clearly shown in the figures and disclosed in the accompanying specification as meaning from one side or surface to the other. Additionally, as explained supra, we find no 7Page: Previous 1 2 3 4 5 6 7 8 9 NextLast modified: November 3, 2007