Appeal No. 1998-0476
Application 08/397,157
The Examiner states the reasons why it would have been obvious
to have modified MOTOROLA, at the bottom of page 9 of the
answer.
Simply put, we find no basis for the Examiner’s
stated reasons to modify Motorola, or the facts taken Official
Notice thereof. Both of the Examiner's statements sound very
much like the language of Appellants’ disclosure.
Appellants argue that MOTOROLA gives no hint of a
difference in operation while in the ROM or RAM mode, and
makes no mention of suppressing signals to the monitor circuit
(brief-page 15). Applicants contend that even if it were
known to suppress irregular signals, the solution of switching
back and forth between the two operational modes would not
have been obvious (brief-page 16).
The Federal Circuit states that "[t]he mere fact
that the prior art may be modified in the manner suggested by
the Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
-9-
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