Appeal No. 95-4154
Application 08/122,193
For the foregoing reasons, the rejection of claims 30, 31
and 35-37 as being anticipated by Asano cannot be sustained. The
rejection of claims 34, 38, 39, 40 and 45 also cannot be
sustained.
Regarding the rejection of claims 34, 38, 39, 40 and 45
under 35 U.S.C. § 103 as being unpatentable over Asano, the
examiner has articulated no motivation for one with ordinary
skill in the art to eliminate the monitoring transistor 20 in
Asano and to have a user enter a specific selection of one output
impedance to be exhibited by the integrated circuit. The mere
fact that the prior art may be modified in a manner to yield the
claimed invention 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). Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor. Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc.,
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995).
Thus, we do not sustain the obviousness rejection of claims
34, 38, 39, 40 and 45 over Asano.
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