Appeal No. 96-3440
Application 08/261,613
application on appeal. Appeal Brief at 10, lines
10-27.
We agree with appellant. 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).
First, Tarng employs a clamping transistor for reasons
that appear inapplicable to the admitted prior art driver
circuit. Column 1, lines 15-42. Second, even if there were
motivation to combine the teachings of Tarng with the admitted
prior art, we are left to speculate why the skilled artisan
would employ Tarng’s clamping transistor in the recited
position and with the recited function. The only reason we
can discern is improper hindsight reconstruction of
appellant’s claimed invention.
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