Appeal No. 2005-0449
Application No. 09/498,559
characteristic relied on. For example, See In re Swinehart, 439
F.2d 210, 212, 169 USPQ 226, 228 (CCPA 1971). Nevertheless, it
is also well settled that, before an applicant can be put to this
burdensome task, the examiner must provide some evidence or
scientific reasoning to establish the reasonableness of the
examiner’s belief that the functional limitation is an inherent
characteristic of the prior art. See Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). Also see Ex parte Levy,
17 USPQ2d 1461, 1463-64 (Bd. Pat. App. & Int. 1990).
Here, the examiner’s rationale for believing that the
circuit of Vargha can perform the active inductor function
required by claims 14 and 16 is that the Vargha and here claimed
circuits “have similar structures” and that patentee’s transistor
“is biased in the same condition as the gate terminal of the
claimed transistor.” Id. It is true that, like the circuit of
claims 14 and 16, the Figure 1 circuit of Vargha includes a
transistor and a bias is supplied to this transistor using a
voltage generated on the circuit. However, as thoroughly
explained by the appellant in the brief and reply brief, the
aforementioned commonalities are inadequate to establish that
patentee’s Figure 1 circuit is capable of performing the active
inductor function of the appellant’s claimed circuit.
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