Appeal No. 2002-0558 Page 13
Application No. 09/289,076
teachings from the prior art itself would . . . have suggested the claimed subject matter
to a person of ordinary skill in the art.'" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993) (quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
147 (CCPA 1976)).
Here, the examiner fails to allege, let alone show, however, that Kiko's
compensated transformer circuit would have produced a voltage rise across a winding
that substantially cancels a voltage drop across the resistance of the winding. We will
not “resort to speculation,” In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), as to such production. Absent a teaching or suggestion of producing a
voltage rise across a winding that substantially cancels a voltage drop across the
resistance of the winding, the examiner fails to present a prima facie case of
obviousness. Therefore, we reverse the rejection of claim 5; of claim 9; of claims 10-
15, which fall with claim 9, of claim 16; and of claims 17-19, which fall with claim 16.
CONCLUSION
In summary, the rejection of claims 1 and 4 under § 102(b) and the rejection of
claims 20-24 under § 103(a) are affirmed. In contrast, the rejection of claims 2, 3, and
5-19 under § 103(a) is reversed. "Any arguments or authorities not included in the brief
will be refused consideration by the Board of Patent Appeals and Interferences. . . ." 37
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007