Appeal No. 1997-1231
Application No. 08/308,985
make up any invention, the particular structure recited in
claim 1 is not shown by Roberts and Oda, either singly or in
combination. The Examiner has not shown the reason why an
artisan would have incorporated a DC/DC converter in Roberts
which is designed to be operated on an AC power line. Even if
one were to introduce such a DC/DC converter in Roberts, the
Examiner has not demonstrated how the control circuitry of
Roberts would have been modified to meet the claimed “control
circuitry being arranged to drive the dc/dc converters in a
manner such that, each time the lamp is switched on, first the
‘fly-back’ converter is activated in
order to generate the very high voltage and, subsequently, the
‘feed-forward’ converter is activated in order to generate the
low voltage with high electrical power.” The Federal Circuit
states that “[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 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125,
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