Appeal No. 1999-2250
Application No. 08/980,308
its independent claim 6.
With regard to claim 11, even though this claim stands with independent claim 6,
this claim also specifically requires that “the total power loss is 2dB due to insertion loss
in the circulator.” The examiner contends that this limitation is inherently taught by
Chawki. The examiner gives no explanation as to why it is believed that this limitation is
inherently taught by Chawki and, in fact, the inherency allegation is challenged by
appellants. The examiner’s response is to state that “if two device [sic, devices] are
constructed in the same way with the same elements, then the characteristics of the
two device [sic, devices] would be identical, therefore, the inherency reasoning of the
rejections are maintained” [answer-page 7].
The fallacy with the examiner’s reasoning is that there is no evidence that the
devices of appellant and of Chawki are “constructed in the same way with the same
elements.” While the broadly claimed recitations of first and second “optical elements”
may be met by Chawki, it does not mean, per se, that the elements of Chawki are
constructed in the “same manner” as appellants’ so as to result in a “total power loss” of
“2dB.”
Therefore, we will not sustain the rejection of claim 11 under 35 U.S. C. § 103.
10
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