Appeal No. 2005-0827
Application No. 09/903,239
Jul. 29, 2004) and the Reply Brief (filed Dec. 3, 2004) for appellants’ position with
respect to the claims which stand rejected.
OPINION
We cannot sustain the rejection applied against claims 1 through 10, essentially
for the reasons expressed by appellants in the briefs.
The rejection relies on Sasaki for the teaching that when a transistor is on, it is
“functionally equivalent” to a resistor. Sasaki describes, in column 1, a prior art
microwave switch containing FET’s that are modeled as capacitors when off and as
resistors when on. The objective teaching of Sasaki, however, shows no more than that
the operation of FET’s in the circuit of the prior art microwave switch (Fig. 4(a)) is
equivalent to the respective passive devices. The teaching is not in the context of, for
example, a general electronics text that might tend to show that the artisan would have
recognized the alleged equivalence as it relates to the instant claimed subject matter.
Even assuming that functional equivalence is shown by Sasaki, the rejection
appears to recognize that a showing of equivalence is not sufficient to demonstrate a
suggestion in the prior art for replacing certain transistors of Zhang with resistors, such
that the requirements of (broadest) claim 1 are met. The rejection relies on an
additional reference2 (Stockstad, U.S. 6,429,685) for showing that a resistor is
2 Cf. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) (“Where a
reference is relied on to support a rejection, whether or not in a ‘minor capacity,’ there would appear to be
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