Appeal No. 97-1246 Page 9
Application No. 08/196,731
We observe that just because an element was old and well
known in an art does not render its combination obvious per se
as the examiner’s rejection might imply. A suggestion, i.e.,
a motivation, must be shown for the proposed use of the
element.
The suggestion must be based on more than the mere existence
of the element. More specifically, the prior art as a whole
must have contained something to suggest the “desirability” of
using the element to modify a prior art reference. Lindemann
Maschinenfabrik GMBH v. American Hoist and Derrick Co., 730
F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
As aforementioned, the examiner explained the
desirability of integrating Amini’s computer system onto a
single chip, viz., reducing the size of the system, reducing
power consumption, and reducing cost. (Final Rejection, p. 3;
Examiner’s Answer, p. 9) In contrast, the examiner failed to
identify the desirability of outputting a signal off the chip
to indicate occurrence of an error as specified in claims 1
and 4. We agree with the appellants, (Brief, pp. 11-12), that
the examiner did not explain why, if the computer system of
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