Ex parte BAC V. PHAM - Page 5




          Appeal No. 1998-0587                                                         
          Application 08/385,253                                                       

          based.                                                                       
               Each of appellant’s independent claims 1, 17 and 25                     
          includes an input circuit which is coupled to the respective                 
          outputs of a set of electronic components.  The difference                   
          between the appellant’s claimed invention and Squires is not                 
          disputed.  The examiner acknowledges that Squires “only                      
          discloses one output coupled to the input circuit” (answer at                
          pages 4, 7 and 8) and “does not disclose a signal from a                     
          preselected one of the outputs coupled to the input circuit”                 
          (answer at page 3) (emphasis added).                                         
               According to the examiner, however, “[a]dding additional                
          outputs will allow for individual optimization of each                       
          electronic component” (answer at pages 4, 7 and 8).  The                     
          examiner cites no evidence to support this finding which                     
          appears to be based solely on hindsight in light of the                      
          appellant’s own disclosure.  Any optimization revealed by                    
          Squires, as applied by the examiner, is based on a single                    
          output collectively generated by a set of electronic                         
          components.  The examiner has not demonstrated that Squires                  
          would have reasonably suggested to one with ordinary skill in                
          the art that a separate output should be received by the input               

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