Ex parte PARKS - Page 6




          Appeal No. 1998-0916                                                        
          Application 08/331,435                                                      


          power supply and a passive overshoot circuit establishes the                
          asymmetrical operation which the examiner argues is lacking in              
          claims 1 and 10.  Although claim 1 would read more clearly if               
          the word “coupled” had not been deleted from amended claim 1,               
          we agree with appellant that the word “directly” in claims 1                
          and 10 cannot be met by an additional element included between              
          the two named components.  Thus, appellant is correct that                  
          neither switch 101 nor 102 of Uenishi is directly (coupled)                 
          between a first power supply and the output because inductance              
          element 108 interrupts the direct connection.  Therefore, a                 
          feature of claims 1 and 10 is not disclosed by Uenishi, and                 
          the anticipation rejection is not sustained.                                
          Jacobson suffers the same problem as Uenishi.  That                         
          is, inductor 18 in Jacobson precludes either of switches 14 or              
          16 from being directly between a first power supply and the                 
          output as recited in claims 1 and 10.  Therefore, we also do                
          not sustain the rejection based on Jacobson.                                
          Although Kayser teaches each of switches 44 and 47 as                       
          being directly between a power supply input and the output,                 
          Kayser fails to disclose a passive overshoot circuit connected              
          as recited in claims 1 and 10.  The examiner’s response that                
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