Ex parte FISCHER - Page 11




          Appeal No. 96-3442                                                          
          Application No. 08/253,884                                                  

          even assuming the combination is proper, such combination                   
          would not result in the invention as claimed.                               
               The Examiner’s response is to argue (Answer, pages 7 and               
          8) that proper motivation exists for modifying the prior art                
          with the base clamping circuit of Sobue even though such                    
          motivation would be for a different reason, i.e. prevention of              
          electrostatic destruction rather than inhibiting bootstrap                  
          capacitor discharge.  On this particular point, we agree with               
          the Examiner’ contention that a showing of proper motivation                
          does not require that a combination of prior art teachings be               
          made for the same reason as Appellant to achieve the claimed                
          invention.                                                                  
               We note in general terms that circuitry utilizing MOS                  
          transistors would benefit from a device which clamps excessive              
          energy resulting from an internal breakdown condition known as              
          “electrostatic destruction.”  However, we are in agreement                  
          with Appellant that, even assuming that one of ordinary skill               
          were motivated for any reason to modify the prior art                       
          bootstrap circuit by adding a base clamping circuit such as in              
          Sobue, the combination would not result in the invention as                 
          claimed.  We note that Appellant’s claim 8 recites                          

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