Ex Parte NICOLLINI et al - Page 10



          Appeal No. 2000-1939                                                        
          Application 08/791,281                                                      
          (capacitors C2 & C3)."  Answer at 5. 2  Nevertheless, we agree              
          with Appellants that Gregorian would not have suggested to the              
          artisan that the admitted prior art circuit suffers from the                
          problem of capacitor discharge due to a leakage current from one            
          or more of the switching transistors.  Although, as the examiner            
          correctly notes (Answer at 7-8), the admitted prior art circuit             
          and Appellants' circuit are similar in that both include a                  
          capacitor having a terminal connected to two switches, the                  
          circuits are otherwise considerably different in structure and              
          operation as regards the capacitors in question.  Specifically,             
          in the admitted prior art circuit both of the terminals of the              
          capacitor are switched by switches operating at the fundamental             
          clocking frequency (Fig. 2), whereas in Gregorian only one of the           
          terminals of capacitor 23 is switched at all, let alone at the              
          fundamental clocking frequency (i.e., by transistor 24 in                   
          response to signal N2).  In view of these significant                       
          differences, we are not persuaded that one skilled in the art               

                    2  As the examiner correctly notes (Answer at 6), a               
          proper § 103(a) rejection need not be based on solving the same             
          problem that is solved by the applicant's invention.  See In re             
          Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.               
          1992) ("As long as some motivation or suggestion to combine the             
          references is provided by the prior art taken as a whole, the law           
          does not require that the references be combined for the reasons            
          contemplated by the inventor.  In re Kronig, 539 F.2d 1300, 1304,           
          190 USPQ 425, 427-28 (CCPA 1976); In re Lintner, 458 F.2d 1013,             
          1016, 173 USPQ 560, 562 (CCPA 1972).").                                     
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