Appeal No. 1996-3591
Application No. 08/251,053
of “. . . a voltage divider coupled to the feedback
circuit . . .”.
In response, Appellants argue a lack of suggestion or
motivation in the references for combining or modifying the
teachings to establish a prima facie case of obviousness.
Appellants assert at pages 6 and 7 of the Brief:
The claimed invention cannot be used as a
template to piece together the teachings of
the prior art. In Re Fritch [sic], 23 USPQ 2d 1780
(CAFC 1983). Therefore, the Examiner has found
a voltage divider circuit from the prior art
merely piecing together the alleged teachings
of this reference with an alleged teaching from
the prior art without finding the desirability
of such a modification from the prior art.
After careful review of the Iyengar and Masaki references
in light of the arguments of record, we are in agreement with
Appellants’ stated position in the Brief. Even if one could
utilize the multiplier circuit output voltage of Iyengar as
the reference input to the voltage divider of Masaki, as
proposed by the Examiner, the question arises as to why would
the skilled artisan do so? Where is the suggestion for this
combination other than Appellants’ own disclosure? A finding
of obviousness, within the meaning of 35 U.S.C. § 103 requires
something more than that one “could” modify the prior art to
10
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: November 3, 2007