Appeal No. 1998-1319
Application No. 08/466,188
Suzuki. The examiner asserts, "Suzuki had shown plural
voltages (i.e. V -V with a selection means 8.[)] ... One of
1 b
ordinary skill in the art would have been motivated by ...
Suzuki to use plural tone voltages in Applicants [sic] prior
art shown in Figures 1 and 2." Nowhere, however, does the
examiner provide a teaching or suggestion from the prior art
explaining why the skilled artisan would have been led to
modify APA nor how to modify APA to arrive at the claimed
invention. Since claims 9, 10, 15, 18 through 29, 31, and 33
through 44 each require the generation of plural tone
voltages, as determined above, and claims 30 through 32
require outputting a multi-tone voltage, and since the
examiner has not properly combined APA with a reference that
teaches the missing limitations, the examiner has failed to
establish a prima facie case of obviousness for claims 9, 10,
15, 18 through 44.
We should note that the examiner also includes Arai in
the statement of the rejection (Answer, page 7). The examiner
asserts that "Arai had shown the two claimed latch means and
voltage selection means 400," even though he previously states
that the only limitation lacking from APA is multiple tone
9
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