Appeal No. 2000-0335
Application No. 08/780,551 Page 9
not span the orifice 4. As noted by appellants (brief, page 5)
claims (2 and 8) previously recited "at least partially spanning"
and that this language was changed to "spanning."
We find the examiner's arguments (answer, pages 3 and 4)
that the claim limitation "the second electrode spanning the
orifice in the third electrode," lacks "criticality" and was
never discussed in the original specification as "carrying any
weight," to be misplaced. The issue before us is whether the
differences between the electrode structure of Fujii and
appellants' claimed device would have been obvious to a skilled
artisan. The examiner cannot ignore claim limitations under the
guise that the original specification does not specifically set
forth that the structure of the electrode is critical to the
invention, or that the disclosure never discussed the electrode
structure as "carrying any weight." Thus, we find that the
examiner has applied an incorrect standard to the claims.
Nor are we persuaded by the examiner's assertion that the
structure of Fujii is the equivalent of the claimed spanning of
the orifice by the second electrode. In order to rely upon
equivalence as a rationale for supporting an obviousness
rejection, the equivalency must be recognized by the prior art.
See In re Ruff, 256 F.2d 590, 599, 118 USPQ 340, 348 (CCPA 1958).
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