Appeal No. 96-2576
Application 08/148,271
of power receiving circuits with different operating voltages;
(2) the battery is mounted on the semiconductor chip; and (3) a
power source switch is incorporated within the integrated
circuit. Appellant also argues that there is no motivation for
duplicating the single integrated circuit of McCain and then
using the different voltage sources as taught by Shimohigashi.
In other words appellant questions whether there is any
suggestion to modify the teachings of McCain with the teachings
of Shimohigashi in the manner proposed by the examiner.
We will not concern ourselves with the propriety of each
of the three distinctions raised by appellant because we agree
with appellant that there is no suggestion to duplicate McCain’s
integrated circuit and to add plural operating voltages as
suggested by the examiner. The invention of claim 1 would
require a modification of McCain and a combination with
Shimohigashi which could come only from a hindsight
reconstruction of the invention. Although the examiner asserts
that it is obvious to duplicate components and provide plural
voltages, we agree with appellant that the modification proposed
by the examiner would not result in the invention of claim 1
[reply brief, page 5]. The mere fact that the prior art may be
modified in the manner suggested by the examiner does not make
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