Ex parte BYERS - Page 7




          Appeal No. 96-3274                                                          
          Application 08/173,408                                                      

          Examiner concludes (FR3-4):                                                 
               [I]t would have been obvious to one of ordinary skill in               
               the art at the time of invention to provide such                       
               arrangement in Peterson's [sic] system because it would                
               have allowed the network interface module to operate                   
               asynchronously with respect to the micro-engine, thereby               
               eliminating the use of [a] synchronous clock which                     
               otherwise might have been needed during the synchronous                
               operation of the network interface module and the                      
               micro-engine.                                                          
          We find no factual support for the Examiner's reasoning.  The               
          Examiner seems to say that it would have been obvious to                    
          provide asynchronous timing so that the system can operate                  
          asynchronously.  This does not address the question of why one              
          of ordinary skill in the art would have been motivated to use               
          asynchronous timing in the closely coupled system of Petersen               
          where the host interface logic 102 and the network interface                
          logic 104 are part of the same network interface processor 14.              
          The Examiner has made up a reason to account for the                        
          difference and has not attempted to back up the conclusion by               
          pointing to support in Petersen or in the knowledge of those                
          of ordinary skill in the art.  "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."                            

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