Appeal No. 94-3053
Application 07/832,661
In response, the Examiner states on page 6 of the
answer that:
[i]t would have been obvious to a person
having ordinary skill in the art to provide
a scan string selection logic network in
accordance with the claims on the chip
disclosed by Hester, because d’Angeac
evidences the necessity of such logic.
However, a review of d’Angeac fails to reveal why a person of
ordinary skill in the electronic processor art would have been
motivated to modify Hester’s support processor to include
circuitry for selecting particular sensor circuits in the
support processor. 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). We fail to find that
the prior art suggests the circuitry for selecting as claimed
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