Ex parte BAKKE et al. - Page 7




          Appeal No. 1999-0261                                                        
          Application No. 08/703,496                                                  


          established proper motivation for the proposed combination of               
          references so as to set forth a prima facie case of                         
          obviousness.  After careful review of the applied prior art                 
          references in light of the arguments of record, we are in                   
          agreement with Appellants’ position as stated in the Brief.                 
          As argued by Appellants (Brief,                                             


          page 5), the Examiner has pointed to no disclosure in Herrig                
          that would suggest any support for the Examiner’s assertion                 
          that Herrig’s system could be modified to allow communication               
          by only one device while bus communication is paused.  Our                  
          interpretation of the disclosure of Herrig coincides with that              
          of Appellants, i.e., when bus communication is paused, the                  
          generation of required bus communication clock signals is                   
          stopped, thereby inhibiting all communication over the bus                  
          (Herrig, column 6, lines 1-9).  We find no evidence provided                
          by the Examiner that would support the obviousness to the                   
          skilled artisan of making the modification suggested by the                 
          Examiner.  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                     
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