Appeal No. 2006-0742 Page
Reexamination Control No. 90/006,013 12
Therefore, the examiner has failed to establish that claim 21 is prima facie
obvious over Corazzini in view of Iwasaki.
As to claim 48, the examiner appears to backpedal from his original
position that Corazzini does not show all the elements of claim 48, including "an
electronic circuit" and a "switch" (Answer, p. 10). In response to appellants' brief,
the examiner now asserts that "the recited elements 'at least one control signal
generator', 'an electronic circuit' and 'manually manipulable operating switch' are
common elements to either Corazzini or Iwaski control circuit" (Answer, p. 17).
More specifically, the examiner asserts that "Corazzini column 2, lines 44-45
states that the motor 40 can be operated both manually and automatically. Thus,
the H-bridge circuit must be controllable by a manual switch." [Answer, p. 18.]
The examiner has failed to establish that Corazzini implicitly shows the elements
of claim 48. While the examiner has asserted what Corazzini discloses (i.e., at
c. 2, ll. 44-45), albeit in a disjointed fashion, and has alleged "design expedient,"
the examiner has not discussed the knowledge of ordinary skill in the art or what
the asserted disclosure in Corazzini would have suggested to the skilled artisan
in terms of the nature of the problem to be solved, e.g., operating a motor both
manually and automatically. Moreover, even assuming arguendo that the
examiner had established that either Corazzini or Iwasaki alone described each
element of claim 48, the examiner would still need to establish not only the
presence of each claim element, but also the structural relationship between
each element set forth in claim 48. Therefore, the examiner has failed to
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