Ex parte NEPOTE et al. - Page 9

          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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