Appeal No. 96-2576
Application 08/148,271
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We find no
such suggestion here.
With respect to independent claim 4, appellant argues
that the following recitations of the claim are not suggested by
the applied prior art: (1) the battery is previously charged by
the normal power source; (2) the battery is mounted on the
semiconductor chip; and (3) a power source switch is incorporated
within the integrated circuit. We will base this decision
primarily on this latter point raised by appellant. With respect
to this point, the examiner asserts that the McCain power switch
is located within the integrated circuit because McCain seeks to
minimize the need for additional external pins [answer, page 3].
Alternatively, the examiner simply concludes that it would have
been obvious to broadly integrate the claimed power source switch
within the integrated circuit [answer, pages 3 and 4-5].
The examiner and appellant disagree on where the power
switch in McCain is located. We find the examiner’s
understanding of McCain and her reasoning to be speculative at
best. We are not inclined to support a rejection based upon a
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