Ex parte YOSHIYUKI MIYAYAMA et al. - Page 9




          Appeal No. 96-0576                                                          
          Application 07/846,231                                                      


          two of the resources will be accessed and canceling the remainder           
          of the requests based on the results of the decoding of the                 
          address(es) as recited in Appellants’ claims.  The Stinson system           
          is directed to allow the microprocessor 1 and the memory bank to            
          operate synchronously momentarily during a read or write cycle.             
          Stinson does not teach canceling the resources that are not                 
          needed for the access operation as recited in Appellants’ claims.           
               Furthermore, we fail to find any suggestion of modifying               
          Stinson’s synchronous data transfer system to provide a system              
          having a multiplicity of resources placed in an access state                
          before decoding the instruction to determine the addresses to be            


          accessed and then later canceling this access state for the                 
          resource not to be accessed once it is determined which resource            
          is to perform the access operation as recited in Appellants’                
          claims.  The Federal Circuit states that "[t]he 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 n.14, 23 USPQ2d 1780, 1783-84 n.14              
          (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221               
          USPQ 1125, 1127 (Fed. Cir. 1984).  "Obviousness may not be                  

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