Appeal No. 1997-0621
Application 08/368,679
73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),
cert. denied, 117 S.Ct. 80 (1996) citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to claim 1, we have reviewed the Examiner's
rejection [answer, pages 2 to 3], the Examiner's response to
Appellants’ arguments [answer, pages 4 to 5] and Appellants’
corresponding arguments [brief, pages 3 to 4]. We agree with
Appellants that Lish does not show the circuit configuration
claimed in claim 1. For example, Lish does not show the
limitations: “a plurality of multipliers ... a FIR
coefficient” (instant claim lines 2 to 4); “a plurality of
sample and hold circuits ... time” (instant claim, lines 5 to
7) and “a plurality of multiplexers ... circuits” (instant
claim, lines 8 to 12). The Examiner, pointing to figures 4A
and 4B in Lish , contends that “[i]t would have been obvious
to a person having ordinary skill in the art to design the
claimed invention according to Lish's teachings because the
reference is a FIR filter having a plurality of switching
circuits for selecting the desired inputs to certain
multipliers” [answer, page 3]. The Examiner does not explain
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