Ex parte INOUE - Page 5

          Appeal No. 1997-3857                                                        
          Application No. 08/220,286                                                  

               In addition, "a proposed modification [is] inappropriate               
          for an obviousness inquiry when the modification render[s] the              
          prior art reference inoperable for its intended purpose.  In                
          re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.                
          1984)."  In re Fritch, 972 F.2d 1260, 1265-1266 n.12, 23                    
          USPQ2d 1780, 1783 n.12 (Fed. Cir. 1992).  Shikama states                    
          (column 2, lines 9-19) that the objects of the invention                    
          include providing a thermistor which is protected from both                 
          external force which cause cracks and chips of the substrates               
          (column 1, lines 41-46) and also gases which penetrate into                 
          the substrate (column 1, lines 50-54) and which has little                  
          heat leakage.  Shikama repeatedly emphasizes that coating the               
          entire thermistor with glass, except where the electrodes are               
          located, in addition to preventing migration of silver ions,                
          prevents heat leakage from the thermistor, gas introduction                 
          into the thermistor, cracking or chipping of the substrate, or              
          peeling off of the underelectrode.  Thus, eliminating a                     
          portion of the glass coating does not merely substitute one                 
          benefit for another, as suggested by the examiner, but rather               
          is completely contrary to the express purpose of the                        
          reference, as argued by appellant (Brief, page 3).  Therefore,              

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