Ex parte KANNO - Page 7




                Appeal No. 1999-1630                                                                                                       
                Application No. 08/784,775                                                                                                 


                speed, while the examiner contends that reduced power consumption is a reason that would have led                          

                the artisan to make modifications to APA.  If the claimed subject matter results from a suggestion by                      

                the prior art to make a modification, albeit for different reasons than those of an applicant, a proper                    

                rejection may, nevertheless, lie under 35 U.S.C. 103.  Our decision herein results, not because reduced                    

                power consumption was employed for the reason for modification, but because, in our view, the                              

                examiner’s reason for modifying APA by changing the bipolar transistors of APA to the MOS                                  

                transistors of Nagasawa (i.e., for reduced power consumption) was not consistent with the disclosure                       

                of Nagasawa with regard to the elements actually causing the reduction in power consumption.                               

                The examiner’s decision is reversed.                                                                                       



                                                         REVERSED                                                                          





                                        ERROL A. KRASS                           )                                                         
                                        Administrative Patent Judge              )                                                         
                                                                                 )                                                         
                                                                                 )                                                         
                                                                                 ) BOARD OF PATENT                                         
                                        JOSEPH F. RUGGIERO                       )   APPEALS AND                                           
                                        Administrative Patent Judge              )  INTERFERENCES                                          
                                                                                 )                                                         
                                                                                 )                                                         
                                                                                 )                                                         

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