Appeal No. 1998-2767
Application 08/391,541
obvious unless the prior art suggested the desirability of the
modification.” In re Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). “Obviousness may not be established using hindsight or
in view of the teachings or suggestions of the inventor.”
Para-Ordnance Mfg. V. SGS Importers Int’l, 73 F.3d 1085, 1087,
37 USPQ 2d 1237, 1239 (Fed. Cir. 1995), citing W. Lish. Gore &
Assocs., v. Garlock, Inc., 721 F.2d 1551, 1553, 220 USPQ 311,
312-13 (Fed. Cir. 1983).
Analysis
There are two independent method claims (1 and 15) and
two independent apparatus claims (17 and 25). We take claim 1
as an exemplary claim. After reviewing the position of the
Examiner [answer, pages 4 to 6 and 8 to 10] and the
Appellants’ position [brief, pages 9 to 13], we are of the
view that the Examiner has not specifically shown the claimed
“diagnostic state machine coupled to the bus and associated
with a first address space defined by addresses on the bus,”
and the step of “latching the first value in the first
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