Ex parte KLAS et al. - Page 7




          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                 
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