Appeal No. 1997-2034
Application No. 08/347,788
the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). The
examiner must provide a reason why one having ordinary skill
in the pertinent art would have been led to modify the prior
art to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley,
837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986).
In the present case, the examiner concludes (Answer,
pages 4-5) that making the threshold of the FET between the
intermediate node and ground higher than that of the FET
between the intermediate node and the output (as recited in
independent claims 1 and 9) would have been obvious "for the
purpose of simplifying the circuit." The examiner provides no
factual basis for this conclusion. Similarly, the examiner
baldly asserts, with no corroborating evidence (Answer, page
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