Ex parte DELL et al. - Page 5




          Appeal No. 1997-1755                                                        
          Application 08/163,447                                                      


          suggestions.  In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6              
          (Fed. Cir. 1983).  “Additionally, when determining                          
          obviousness, the claimed invention should be considered as a                
          whole; there is no legally recognizable ‘heart’ of the                      
          invention.”  Para-Ordnance Mfg. v. SGS Importer Int’l, Inc.,                
          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).                        
               We first take claim 1.  After discussing individually the              
          applied references [answer, pages 3 to 4], the Examiner                     
          asserts that “one would have been motivated to locate the                   
          resistor between the common clock and the reference voltage as              
          taught in Lee et al. in combination with Lin et al. to enhance              
          the clock distribution ..., since it has been held that                     
          rearranging parts of an invention involves only routine skill               
          in the art” [id. 4].  Appellants argue that Lee does not teach              
          the application of any “trimmable”, or other, elements to a                 
          single clock signal to modify the skew of a series of clock                 
          signals applied to a single input terminal, and the addition                
          of the teachings of Lin, admitted prior art, Irwin and Webster              
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