Ex parte FREEMAN - Page 4




         Appeal No. 20000-0717                                                     
         Application 08/906,676                                                    


         to place a low pass filter after phase comparator 32 of Rogers            
         to remove noise and to place a frequency divider before the               
         tracking filter of Rogers to reduce the frequency of the input            
         signal to a predetermined frequency matched to the operating              
         frequency of the tunable band pass filter 30.                             




              Appellant does not deny that low pass filters for                    
         removing noise and frequency dividers for reducing the                    
         frequency of signals were known and we agree that such                    
         elements were known at the time of the instant invention.                 
         However, merely because such elements and their functions were            
         known would not have provided a suggestion to skilled artisans            
         to have provided these elements in the specific combination of            
         elements claimed by appellant.                                            
              The examiner asserts the use of these elements to be “a              
         matter of a design expedient for an engineer dependent upon a             
         particular environment and the applications in which the                  
         tracking filter circuit of Roger [sic, Rogers], Jr. is to be              
         used” [answer-page 5].                                                    


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