Appeal No. 2000-1938
Application 08/940,467
D. The rejection of claim 1
One of Appellants' arguments in response to the rejection is
as follows:
[T]he Examiner has alleged that one of ordinary skill
in the art would have been motivated to make the
alleged modification to reduce the rate of discharge
occurring in the circuit shown in Fig. 1 of the
application. It is believed that one would not have
sought to reduce the rate of discharge because this
would be contrary to the objective of protecting the
switching transistor, and that no suggestion can be
found in the prior art to modify the prior art circuit
shown in Fig. 1 of the application such that the rate
of discharge would have been reduced.
Brief at 12. To the extent Appellants are claiming to have
discovered the problem solved by their invention (viz., the
emission of detrimental electromagnetic radiation) or the
problem's source (viz., the abrupt switching of the zener
diodes), the argument is unconvincing because it is unsupported
by the record before us. As explained in In re Wiseman, 596 F.2d
1019, 201 USPQ 568 (Fed. Cir. 1979):
In [In re] Sponnoble, [405 F.2d 578, 56 CCPA 823,
160 USPQ 237 (CCPA 1969)], on the basis of extensive
evidence recited in the opinion, we found "a clear
indication that he [Sponnoble] discovered the source of
the problem." 405 F.2d at 585, 56 CCPA at 833, 100
USPQ at 243. In contrast, in the present case we find
only the reiterated statement of counsel that
appellants discovered the source of the problem. There
is, however, nothing of record to substantiate the
assertion. The most we can find are the following two
sentences in appellants' specification:
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007