Appeal No. 1998-1114
Application 08/353,254
skill in the art would have been motivated to make the
changes. Moreover, since Yaezawa shows an R-S flip-flop, but
does not show a tri-state buffer, and since Wong shows an R-S
flip-flop and a tri-state buffer, but not a tri-state buffer
controlled by the output of the R-S flip-flop, there must be
some teaching in the knowledge of those skilled in the art
that would suggest combining Yaezawa and Wong so as to have
the R-S flip-flop control the tri-state buffer. However, we
find no specific teaching or discussion of this limitation.
As to the Examiner's conclusion that the invention would
have been obvious because the level of ordinary skill in the
art is very high, "this observation alone cannot supply the
required suggestion to combine these references."
In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed.
Cir. 1998). As stated in Rouffet, id.:
While the skill level is a component of the inquiry for a
suggestion to combine, a lofty level of skill alone does
not suffice to supply a motivation to combine. Otherwise
a high level of skill in an art field would almost always
preclude patentable inventions. As this court has often
noted, invention itself is the process of combining prior
art in a nonobvious manner. . . . Therefore, even when
the level of skill in the art is high, the Board must
identify specifically the principle, known to one of
ordinary skill, that suggests the claimed combination. .
. . In other words, the Board must explain the reasons
one of ordinary skill in the art would have been
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