Ex parte NYLUND - Page 12




          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.]                                           

                                         12                                           





Page:  Previous  3  4  5  6  7  8  9  10  11  12  13  14  15  16  17  Next 

Last modified: November 3, 2007