Appeal No. 1998-2982
Application No. 08/582,716
OPINION
At the outset, we note that the examiner has withdrawn a reference (an IBM
Technical Disclosure Bulletin) that was used in an earlier section 103 rejection. (See
Answer, page 2.) The references of Jagini and Renfro thus constitute the evidence that is
before us in support of the rejection under 35 U.S.C. § 103.
We agree with appellants that the examiner has failed to set forth a prima facie
case of unpatentability. The statement of the rejection (Answer, page 3) alleges that Jagini
discloses “all the claimed features” of the claims but for the “input latch” (claim 1) or
“converting the pulsed electrical signal” (claim 11). Aside from the fact that the specific
requirements of independent claims 1 and 11 that are additional to the “input latch” or the
“converting” are not pointed out in Jagini, there is no showing of motivation in the prior art
for combining the “latch circuit” of Renfro with the circuitry of Jagini.
We accept the apparent premise that latch circuits were well known to the artisan.
However, that all the elements in a combination were known does not, without more, show
obviousness of the subject matter. A combination may be patentable whether composed
of elements all new, partly new, or all old. Rosemount, Inc. v. Beckman Instruments, Inc.,
727 F.2d 1540, 1546, 221 USPQ 1, 7 (Fed. Cir. 1984). Prior art references in
combination do not make an invention obvious unless something in the prior art would
suggest the advantage to be derived from combining their teachings. In re Sernaker, 702
F.2d 989, 995-96, 217 USPQ 1, 6-7 (Fed. Cir. 1983). Our reviewing court requires
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