Appeal No. 1997-3821
Application No. 08/570,256
We do not agree that it would have been obvious to provide
each of Morgan's memory boards 70, 72, 74, and 76 with a
memory controller like Morgan's memory controller 30,
including its configuration status registers 202 (Fig. 2).
Because this modification would increase the total number of
memory controller circuits, it would not reduce the cost, as
urged by the examiner. Also, the examiner has not explained,
and it is not apparent to us, why one skilled in the art would
have concluded that such a modification of Morgan would
result in fewer interconnections, as asserted by the examiner.
This motivation instead appears to come from appellant's own
disclosure, which of course is improper. See In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992)
(the examiner can only satisfy the burden to make out a prima
facie case for obviousness by ?showing some objective teaching
in the prior art or that knowledge generally available to one
of ordinary skill in the art would lead the individual to
combine the relevant teachings of the references”).
The examiner's reliance on Nerwin and Larson is also
misplaced, as those cases concern mechanical inventions having
interconnected parts.
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