Appeal No. 1997-3821 Application No. 08/570,256 such connectors, which would be plugged into mating connectors in the expansion slots of computers, as implied by appellant's discussion of the prior art at pages 2 and 3 of the specification, quoted in part at page 2 of this opinion. Furthermore, while we agree with the examiner that it would have been obvious to provide Morgan's memory controller 30 as a package having connecting pins for engaging mating connectors on the CPU board 15, that modification would not satisfy the requirement of claim 1 and the other independent claims that the claimed controller chip, including its internal registers (Morgan's configuration registers 200 in configuration status register 40), be mounted on the expansion circuit board along with the claimed memory (Morgan's signature registers 160 - Fig. 5). On this point, the examiner further explains: Applicant also argues that there is no incentive to place the various elements on a single board as suggest[ed] by the Examiner (see P 16-17 of the Appeal Brief). It is a common practice in the art to move elements onto a common board to reduce cost and to increase reliability because there are less interconnections. In addition it has been held that making pieces separable/integral is a design choice. See Nerwin v. Erlichman, 168 USPQ 177 ([Bd. Pat. App.] 1969) and In re Larson, [340 F.2d 965,] 144 USPQ 347 (CCPA 1965). [Answer at 7.] 12Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 NextLast modified: November 3, 2007