Appeal No. 1997-0342
Application 08/229,135
issue of obviousness with respect to the specific limitations
of the claim. The selector and register elements in
Appellant’s claim 14 are recited as having a specific
interrelationship with the system bus including specific
functions which are performed in conjunction with such
interrelationship. As the Examiner has stated in the Answer,
no such registers or selectors are explicitly seen to exist in
Kahn. Further, the Examiner has provided no indication as to
how and where the skilled artisan might have found it obvious
to modify the Kahn teachings to arrive at the particular
selector and register arrangement of the claimed invention.
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, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992). Since, in our view, the
Examiner’s line of reasoning does not establish a prima facie
case of motivation, the Examiner’s 35 U.S.C. § 103 rejection
of claim 14 is not sustained.
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