Appeal No. 2001-1955
Application 08/989,917
taught in his rejection under 35 U.S.C. § 103 as to claim 9 as
expressed at the bottom of page 9 of the principal brief on
appeal is misplaced. The mere fact that the examiner has
asserted that McKinney does not disclose a decoder as in claim
9 is an incomplete statement of the examiner's view expressed
at page 5 of the answer. Although we are not persuaded by the
examiner's assertion that the use of decoders was well known
in the art and such therefore renders claim 9 obvious within
35 U.S.C. § 103, the reference still teaches or suggests to the
artisan this claimed circuit element anyway. The discussion of
the prior art patent to Ramsey at column 1 of McKinney specifi-
cally mentions that decoders are contemplated within the context
of his teachings as noted in the sentence at lines 33-37. The
summary of the invention of McKinney that follows this discussion
clearly indicates to us and to the artisan that McKinney's
2-input multiplexers 12-22-82 in his figure perform in essence a
decoding operation or function.
As noted by the examiner at the bottom of page 7 of the
answer, appellants predicate patentability of claims 24-28 on
the basis of their urging the patentability of claims 1 and 23.
Therefore, no separate arguments are presented to these claims
in the principal brief on appeal. To the extent appellants make
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