Appeal No. 1997-0917
Application 08/309,565
output port of the multiplexer, while Li’s demultiplexer and
multiplexer are separated by a sink register.
The Examiner responds that the direct connection
is not a patentable distinction, but rather
an engineering choice. ... The function of
the sink register is to act as a closed-
coupler between the MUX and DEMUX (see
column 6, lines 11-16). This function can
be incorporated into the control register
file, since Li suggests that the content of
register file can be loaded to or from the
sink register (see column 5, lines 25-31).
(Answer-page 16.)
We do not agree with the Examiner. The Federal Circuit
states that "[t]he 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 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). "Obviousness may not be established
using hindsight or in view of the teachings or suggestions of
the inventor." Para-Ordnance Mfg. v. SGS Importers Int’l, 73
F.3d at 1087, 37 USPQ2d at 1239, citing W. L. Gore & Assocs.,
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