Appeal No. 2001-2018
Application No. 08/668,114
Kimyacioglu for a teaching of a phase shifter 52 having an RLC
network, though Figure 2 of Kimyacioglu appears to us to depict
two series-connected inductors connected to a capacitor. The
examiner then applies Nilsson for its teaching of equivalent
circuits to somehow provide an incentive for modifying the phase
shifting network of Worsham by providing for a resistor in series
with capacitor 30.
The examiner has failed to provide a convincing rationale as
to what would have led the artisan to modify Worsham to provide
for the claimed subject matter. The examiner’s motivation for
combining the applied references appears to come from appellant’s
own disclosure. Such hindsight gleaned from an applicant’s own
disclosure cannot serve as a basis for combining references
within the meaning of 35 U.S.C. 103.
A review of the examiner’s rationale, as per equivalent
circuits, appears to be more of a mathematical rationale as to
how the instant claimed subject matter may be constructed rather
than a sufficient basis to provide the answer as to why the
artisan would have been led to the instant claimed subject matter
without appellant’s disclosure. In short, we agree with
appellant [bottom of page 9 of the principal brief] that the
examiner has not provided a sufficient basis for replacing the
-4–
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007