Appeal No. 95-4545
Application No. 08/094220
The examiner’s rejection of Claim 4 proposes to replace
Sharp’s resistor 11 with an FET shown in MacMillan’s Figure
14, and use the modified Sharp device as Nagasawa’s bias
voltage Vb. The examiner relies on "designs choice" for
modifying Sharp. Examiner’s Answer at 6.
Appellants argues:
"In making the rejection, the Examiner is essentially
substituting the transistor of one reference for a
resistor in another reference to build the present
invention because the present invention utilizes a transistor
in its constant current source and not a resistor. Impetus
for this substitution is not provided by the
references themselve nor by knowledge in the art. Thus,
prima racie obviousness has not been established and,
accordingly, the rejection of claim 4 is erroneous and
should be reversed".
Appeal Brief at page 11, line 26, through page 12, line 8.
We agree with appellant. The mere fact that the prior
art may be modified in the manner suggested by the examiner
does not make the modification obvious unless the prior art
suggested the
desirability of the modification. In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). In the present case, the examiner has identified no
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