Appeal No. 95-3917 Application 07/861,144 Appellants' arguments that neither Hochschild nor Merrick suggests any relevance to trimming (Brief, page 15) are not persuasive for the reasons stated in the rejection over Merrick. That is, the definition of trimming is broader than argued by appellants and declarant McKenny and the structure of claim 1 suggests that a passive circuit component is "trimmable" if it satisfies the limitations for being able to selectively include or exclude passive elements from a circuit path. Appellant argues that the examiner has not shown any motivation for combining Hochschild and Merrick to arrive at the claimed invention (Brief, page 15). The examiner responds that both Hochschild and Merrick are digitally controlled resistors and that it would have been obvious to replace one kind of digitally controlled resistor with another. We agree. Hochschild shows that a parallel-connected arrangement of resistors was known. Merrick states that "[t]he internal circuit of the digitally controlled resistance D is schematically represented by series resistors r , r and r that are respectively shunted byR 1 2 3 switches s , s and s ; but in actuality, the resistor connections would be much more complicated"1 2 3 (column 18, lines 57-61), which plainly suggests that other arrangements of resistors could be used. One of ordinary skill in the art would have been motivated to apply the parallel-connected arrangement in Hochschild as an alternative to Merrick's series-connected arrangement. Appellant argues (Brief, page 16): "The claimed methods and structures meet long-felt needs in the art of analog integrated circuit design. The duration of long-felt need is shown, for example, by the excerpt from the decade-old Grebene book which is attached as APPENDIX D." The examiner notes that Grebene does not discuss any long-felt needs (Examiner's Answer, page 10). We agree that the fact - 11 -Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007