Appeal No. 95-1199
Application 08/101,348
Claims 1-13, 24-26, 30, and 31 stand rejected under
35 U.S.C. § 103 as unpatentable over admitted prior art in
view of Iizuka. According to the examiner, it would have
obvious to one of ordinary skill in the art to have used
capacitors to couple the inverters of admitted prior art
Figure 1 “since Iizuka shows resistors and capacitors used to
couple inverters.” Examiner’s Answer at 4, lines 1-5.
The 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). The examiner has not explained how Iizuka suggested
the desirability of adding capacitors to the admitted prior
art of Figure 1. The examiner’s statement that “Iizuka shows
resistors and capacitors used to couple inverters” does not
identify any reason why one skilled in the art would add
capacitors to the Figure 1 prior art. Upon our own review of
the references, we are unable to find where the prior art
suggested the desirability of the modification.
Thus, the rejection is not sustained.
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