Appeal No. 2000-1941
Application 08/567,128
actually read any of claims 2, 9 and 10 on any of the three
separately applied references. Instead, the examiner identifies
a partial list of the elements of the claimed invention, notes
that there are differences between the claimed invention and each
of the applied references, and the examiner then dismisses the
acknowledged differences as being a routine design expedient
which the artisan would be motivated to attain [answer, pages 7-
9].
Appellants argue that neither Nelson, Ertel nor Concelman
teaches or suggests the claimed resistance element with the
particular application of voltage potentials as recited in the
claims on appeal. Appellants argue that the examiner’s rejection
results from hindsight reasoning [brief, pages 8-13].
The examiner responds that the three applied references
are functionally or structurally equivalent to the claimed
invention, and the examiner simply asserts that the modifications
necessary to achieve the claimed invention would have been
obvious to the artisan [answer, pages 10-13].
We will not sustain any of the examiner’s rejections
based on Nelson, Ertel or Concelman taken alone because the
examiner has failed to establish a prima facie case of
obviousness. The examiner has basically ignored the specific
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007