Ex parte MONTI et al. - Page 11

              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                                     

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