passages in the Herman IDD, the Herman NDI, and Halama affidavit that Herman direct us to do
not describe that both of the first and second waves are continuous. It is not enough that one of
ordinary skill in the art would understand that, given the IDD, the first and second waves could
be continuous. As stated above, with respect to count 25, obviousness is not the test for
demonstrating that Herman alone conceived of the invention. Rather, Herman must demonstrate
that he, prior to the critical date, thought of the embodiment where the first and second waves are
continuous.
Count 7
Barnes claim 7 depends on claim I and recites that the first electromagnetic wave is a
pulsed wave and the second electromagnetic wave is a continuous-wave (ff 13). Herman, in his
declaration, argues that the subject matter of count 7 was provided by him to Fedomchko during
the week of 8-15 January 1999 (ff 54). As with counts 6, 25, and 26, Herman has failed to direct
our attention to corroborating evidence that Herman conceived of the subject matter of count 7
prior to the critical date.
Herman argues that one of ordinary skill could ascertain that the first and second
electromagnetic waves described in the Herman IDD could be pulsed and continuous waves
respectively. Herman argues that since claim I is novel, claim 7, which depends from claim I is
also novel and thus solely attributable to Herman (ff 54). The passages in the Herman IDD and
the Herman NDI and Halama affidavit that Herman direct us to, do not describe that the first and
second waves are pulsed and continuous waves respectively. Again, it is not enough that one of
ordinary skill in the art would understand that, given the IDD, the first and second waves could
be pulsed and continuous waves as already explained.
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