Appeal No. 2006-0742 Page
Reexamination Control No. 90/006,013 10
knowledge of what is in the prior art, e.g., unshown preamplifiers, H-bridge
circuits and switches, is insufficient to support an obviousness rejection (id.).
Moreover, claim 48 requires the electronic circuit to be at least periodically
deactivated in the absence of the control signal and, although the examiner
opines that the motor of Corazzini is deactivated when it is not running, the motor
is not even part of the examiner's imaginary Corazzini circuit (Brief, p. 10).
E. Analysis
In order to establish a prima facie case of obviousness, the examiner must
provide evidence, not broad conclusory statements, that (1) all of the elements of
appellants' claims on appeal were in the prior art, (2) there was a motivation in
the prior art to combine those elements and (3) one of ordinary skill in the art
would have had a reasonable expectation of success in so doing.
First, the examiner has failed to establish that all of the elements of claims
21 and 48 were in the prior art. As to claim 21, the examiner broadly concludes
that "[t]he absence of a signal, in a logic term, is a signal goes [sic] from 'high' to
'low'. This 'high' to 'low' conversion is a control signal that causes the motor to
stop". [Answer, p. 15.] The examiner also argues that when a user stops
pressing a button to generate a command signal the command signal is
terminated and, therefore, stopping generation of a signal equates to generation
of a stop control signal in a logic circuit (Answer, p. 16). The problem is that
claim 21 requires the control signal generator to "generate" a second control
signal to stop the motor. The examiner has not provided evidence sufficient to
establish that the absence of a signal equates to generation of an actual signal
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007