Appeal No. 2002-0397
Application 08/925,968
a retrospective view of inherency is not a substitute for some
teaching or suggestion supporting an obviousness rejection. See
In re Newell, 891 F.2d 899, 901, 13 USPQ2d 1248, 1250 (Fed. Cir.
1989). The examiner has failed to show that a biased FET was a
known equivalent in terms of structure and function to the RC
attenuator constructed as a voltage divider in Nelson.
Appellant argues that the examiner's motivation, to save
chip real estate, is erroneous since "the motivation to save chip
real estate is not met by replacing a single resistor with a
combination of a FET and gate bias resistor" (RBr5).
Of course, the examiner is not able to reply to an argument
in the reply brief. Nevertheless, the examiner should have been
able to anticipate an argument that replacing a single resistor
with an FET and a resistor does not save parts or space. In
addition, there appears to be no suggestion in the references
that the circuit of Nelson is on a chip where chip real estate is
a problem to be solved. Thus, the examiner appears to be
inventing reasons to combine and we agree with appellant that the
examiner's stated motivation is not persuasive.
Regarding Carroll, Townley, and Ohmi, appellant argues that
"replacing a discrete resistor with a continuously-on biased FET
is not notoriously well known in the art for all circuit
applications" (RBr4). Appellant notes the different purposes of
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