Appeal No. 2006-1049
Application No. 09/667,826
B. Appellants’ Response To The Examiner’s Case
Appellants argue at page 21 of the brief that “the present Examiner has
mischaracterized the first Examiner’s reason for allowance.” We agree.
Contrary to the present Examiner’s positions shown in Findings of Fact 82
and 83, the first Examiner’s reason for allowance merely states as shown at
Finding of Fact 70, that:
[t]he prior art of record fails to teach or fairly suggest an infrared
imaging system or focal plane array having in combination with the
other required elements, the means for correcting specified by
independent claim 2, 24, 33 or 37.
We find nothing in this statement that would lead an objective observer to
conclude with respect to either “parallel connected” or “capacitors” that a
deliberate surrender happened in order to avoid an obstacle to patentability.
Yoon Ja Kim v. Conagra Foods, Inc., 465 F.3d 1312, 1323, 80 USPQ2d 1495,
1502 (Fed. Cir. 2006).
As to the Examiner’s position that “capacitors” was surrendered because
they were present in original claim 32, we find it highly relevant that claim 32 was
rejected based on the prior art (Finding of Fact 56) and the limitations of allowable
claim 33 were combined with rejected claims 29-32 to create patent claim 27. The
Examiner sets forth no theory that supports surrender of an individual limitation in
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