Appeal No. 2001-1912
Application No. 08/803,392
states a purpose or intended use of the invention. In re Paulsen, 30 F.3d 1475, 1479,
31 USPQ2d 1671, 1673 (Fed. Cir. 1994).
In view of the evidence and reasoning provided by the examiner, and appellants’
arguments in response, we conclude that the examiner has established a case for
prima facie obviousness of the subject matter as a whole of instant claim 25, which
appellants have failed to rebut. Since appellants have not provided separate
arguments for claim 26 or claim 27, we sustain the rejection of claims 25 through 27
under 35 U.S.C. § 103 as being unpatentable over Okanobu.
The section 103 rejection of claim 23 adds Saito to the teachings of Okanobu
(Answer at 6). Appellants argue (Brief at 21) that the references fail to teach or suggest
providing the variable controlled oscillator integrated into a single IC chip, without
components for the oscillator external to the chip. As noted previously, Okanobu
teaches that a portion of the components for VCO311 are external to the IC. In
appellants’ disclosed invention (specification at 20), bond-wire inductors are used as
resonators to enable fabrication on a single chip.
In response to appellants’ position, the examiner relies on a per se rule of
obviousness that does not apply in the instant case. (See Answer at 9.) In the
absence of a teaching from the prior art in support of the examiner’s position, we do not
sustain the rejection of claim 23.
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