Appeal No. 96-0548
Application 08/161,691
particular: Claims 39-41, 47, 49, 54, and 57 stand rejected
under
35 U.S.C. § 103 as unpatentable over Maas in view of DeCola or
Ibsen; Claims 39-44, 46-51, 53-55, 57, and 58 stand rejected
under 35 U.S.C. § 103 as unpatentable over Fletcher in view of
DeCola or Ibsen; Claims 42, 45, 46, 48, 52, 53, 55, 56, and 58
stand rejected under 35 U.S.C. § 103 as unpatentable over Maas
in view of DeCola or Ibsen and further in view of Dublirer;
Claims 45, 52, and 56 stand rejected under 35 U.S.C. § 103 as
unpatentable over Fletcher in view of DeCola or Ibsen and
further in view of Dublirer.
These rejections all rely on DeCola or Ibsen to show that
an audio signal “can be” varied inversely to a battery
voltage. There are two fatal defects in that rationale.
First, “can be” is not the correct standard. 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). Because the
examiner identifies nothing in the prior art suggesting the
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