Appeal No. 2002-1919 Page 7
Application No. 09/266,376
at 19. (emphases added).) Therefore, we reverse the rejection of claims 1-10 as
lacking an adequate written description.
Rejection of Claims 1-11 and 15 under § 103(a)
Admitting that Sengupta fails to disclose inter alia "operating the electronic device
in a pulse mode manner," (Examiner's Answer at 4), the examiner alleges that "a
semiconductor operating in a pulse mode manner . . . [is] considered to be [an] obvious
design expedient[s] in view of the electronic device. . . which do [es] not solve any
stated problem or produce any new and/or unexpected result." (Id.) Noting that "[i]n a
pulsed power device, power is sequentially turned on and off while the device is
operating, thereby reducing the total amount of power dissipated by the device but
increasing the temperature variation for the device during operation," (Appeal Br. at 6),
the appellants argue, "operating a device in a pulsed mode would run contrary to
operating a device at temperature equilibrium." (Id.)
"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
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984)). "[T]he factual inquiry whether to combine references must be
thorough and searching." McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60
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