Appeal No. 2006-1049
Application No. 09/667,826
Thus, we see the Examiner’s underlying position as an enablement issue
where either an artisan would not know of any non-parallel equivalent, or the
limitation “parallel connected” is essential to the claim. However, the Examiner
does not explain why an artisan would not know of equivalents that are not parallel
connected, and the Examiner does not explain why the “parallel connected”
limitation is essential.
Therefore, we conclude the Examiner has not made a prima facie case with
respect to the rejection under 35 U.S.C. § 112, first paragraph.
V. DISCUSSION – REJECTIONS UNDER 35 U.S.C. § § 102 AND 103
A. The Prima Facie Case
Our Findings of Fact 88 sets out the pivotal point upon which rests all the
Examiner’s prior art rejections. All the rejected claims require in some form a
means for correcting comprising “means for selectively electrically connecting . . .
in response to stored offset values” (reissue claim 1). It is the Examiner’s position
that this means for selectively connecting is described in Hegel at item 60 (Finding
of Fact 88).
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