Appeal No. 1998-2612
Application 08/478,289
We will not sustain the examiner’s rejection of claim 13.
We agree with appellant that there is no reason for the artisan
to add the circuitry of Moog, even if only the mixer, to the
admitted prior art disclosed in Figure 1 of the application. As
noted by appellant, the admitted prior art circuitry has already
performed all the desired mixing. The only basis for plugging
the Moog mixer between terminals 12 and 13 of the admitted prior
art comes from an improper attempt to reconstruct appellant’s
claimed invention in hindsight. Therefore, we will not sustain
the rejection as formulated by the examiner.
Since claim 16 depends from claim 13, we also do not
sustain the examiner’s rejection of claim 16. We note for the
record, however, that appellant’s separate argument for the
patentability of claim 16 is also correct. The examiner’s
finding that Moog is capable of being configured so that the
first and second user-selectable amounts are inversely related
does not support the obviousness of the claimed recitation that
the first and second user-selectable amounts are necessarily
inversely related. Moog does not teach or suggest that the
claimed relationship be achieved.
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