Appeal No. 1997-0179
Application 08/251,054
appellant’s argument that the examiner "has not provided any reason why one type of load is chosen
over another type of load" (Supplemental Reply Brief, page 2)(emphasis in original).
We therefore agree with appellant that the reasoning of the obviousness rejection (see Answer,
pages 5 and 6) took into account knowledge gleaned only from applicant’s disclosure. Specifically,
one would have to look to applicant’s disclosure for direction to generate a burn-in reference voltage
with respect to an external reference voltage (Supplemental Reply Brief, page 2). Only appellant’s
claims teach this important feature. Indeed, appellant’s recited feature of providing burn-in reference
voltage with respect to an external reference voltage (V ) provides the benefit of a burn-in reference
EXT
voltage (V ) which "is both stable with respect to temperature and process" (specification, page 7,
REFBI
Summary of the Invention; see Supplemental Reply Brief, page 2). To modify Fischer to achieve
appellant’s claimed invention would involve the application of knowledge and motivation not clearly
present in the prior art. See In re Sheckler, 438 F.2d 999, 1001, 168 USPQ 716, 717 (CCPA
1971). We conclude that there would have been no motivation to modify Fischer to achieve the
subject matter of independent claims 1 and 5 on appeal.
In view of the foregoing, the decisions of the examiner rejecting claims 1 to 8 under 35 U.S.C.
§ 103 are reversed.
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