Appeal No. 1999-0863
Application 08/674,727
invention involves only routine skill in the art.
In re Japikse, 86 USPQ 70.
We assume this reasoning is intended to apply to all three
limitations. Because the Examiner does not address claim 11,
the same reasoning must apply to claim 11.
Appellant argues that the theory of rearranging parts in
Japikse, which dealt with relocating the position of a switch,
does not apply here because any modification to Ehata, Ruile,
or Mitchell which would result in some form of the claimed
invention would be more than simply relocating the position of
parts. It is argued that there is no motivation to modify the
references to provide the functional limitations.
We agree. Japikse, to the extent it is good law, is
inapplicable to the present rejection. The Examiner proposes
more than just moving parts around: he proposes making changes
in the structure of the surface acoustic wave filter so as to
provide the claimed operational characteristics. There is
absolutely no suggestion for providing the claimed functional
characteristics (1), (2), or (3) in Ehata, Ruile, or Mitchell
and, thus, the obviousness rejection must fail. "The mere
fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007