Ex parte YAMAMOTO - Page 10




          Appeal No. 1999-0863                                                        
          Application 08/674,727                                                      

          coupling type resonator."  Claim 21 contains an almost                      
          identical limitation, except that "generate" is "generates."                
               The Examiner finds (FR6):  "Given that the entire claimed              
          structure is shown by the Takema invention, the device thus                 
          inherently meets the goals of the invention also described in               
          the claims."  Although not expressly stated, it is apparently               
          also the Examiner's position that the functional limitations                
          of claims 20 and 21 are inherent in Ehata.                                  
               Appellant notes that a claimed feature which is said to                
          be inherent must necessarily flow from the teachings of                     
          reference.  It is argued that Takema does not inherently teach              
          or suggest the limitations.  This same argument would apply to              
          Ehata.                                                                      
               There is absolutely no indication that the functional                  
          characteristics of claims 20 and 21 are inherent in Ehata or                
          Takema.  The operational characteristics of surface acoustic                
          wave filters depend on the selection of IDT pairs, the                      
          longitudinal mutual interval between the IDT electrodes, and                
          the longitudinal distance between the IDT and the reflector,                
          among other factors, and there is no indication in Ehata or                 
          Takema that these structural features have been selected to                 

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