Ex parte BALICKI et al. - Page 11




          Appeal No. 96-1286                                                          
          Application 08/259,360                                                      

          cells (claim 13).  Implicit in this look-up table architecture              
          is that those output states not requiring a programmable                    
          architecture element or those non-occurring output states are               
          eliminated or ignored.  The output states are those of multi-               
          variable logical functions.                                                 
               Accordingly, the above discussion concerning inadequate                
          findings by the examiner as to claim 1 are also applicable to               
          claims 5, 9 and 13.  In any event, the examiner’s broad and                 
          general discussion of Nissen and Fuss does not constitute a                 
          sufficient factual basis to modify the appellants’ admitted                 
          prior art to arrive at a look-up table for implementing a                   
          limited number of logic functions with fewer programmable                   
          architecture elements than that necessary for performing all                
          possible logic functions of the input variables.  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); In re Gordon, 733               
          F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).                        
          Obviousness may not be established using hindsight or in view               

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