Appeal No. 1998-0153
Application No. 08/497,227
grouped all the dependent claims as falling with the independent claims, we will sustain the
rejections of claims 3, 5, 7-9 and 11. (See brief at page 7.)
CLAIMS 2, 6 and 10
Even though appellants group all the claims with the independent claims, appellants
specifically argue claims 2, 6 and 10. Therefore, we will address these claims separately.
Appellants argue that one skilled in the art would not have been motivated to combine the
teachings of Ta and Dorais. (See brief at page 15.) We agree with appellants. The
examiner has not provided a convincing line of reasoning for the substitution of the Schmitt
Trigger of Dorais for the Schmitt Trigger taught by Ta. The examiner merely concludes that
they are equivalent and therefore, they each perform equally well. (See final rejection at
page 4.) While we agree with the examiner that they both perform the function of a Schmitt
Trigger, the examiner has not presented a convincing line of reasoning as to why one
would make the substitution of the two inverters for the Schmitt trigger taught by Ta. (See
answer at page 14 discussing “interchangeable.”) This substitution by the examiner was
made with impermissible hindsight since the examiner did not provide reasoning why it
would
have been obvious to make such a substitution. Therefore, we will not sustain the rejection
of dependent claims 2, 6 and 10.
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