Appeal No. 1999-2584
Application No. 08/562,988
Appellants that proper motivation has not been set forth for
the Examiner’s proposed modification so as to establish a
prima facie case of obviousness. The intended purpose of the
zener diodes in Phipps is to protect the MOSFET by clamping
the sustaining voltage lower than the avalanche voltage in
order to dissipate any “fly-back” energy resulting from the
switching of the inductive load (Phipps, page 3, right column,
lines 29-44). We agree with Appellants (Brief, page 4) that,
since any removal of the zener diodes would render the Phipps
device unsatisfactory for its intended purpose, there exists
no suggestion or motivation to make the proposed modification.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984).
We further find no support on the record for the
Examiner’s suggestion that Phipps’ zener diodes could be moved
to a separate circuit package. The mere fact that the prior
art may be modified in the manner suggested by the Examiner
does not make
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