Appeal No. 1999-1055 Page 9
Application No. 08/571,342
does not make such a modification obvious unless the prior art suggests the desirability of
doing so. See, In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984).
It therefore is our conclusion that the combined teachings of Secor, Kenue and
Gazis fail to establish a prima facie case of obviousness with regard to the subject matter
recited in independent claim 1, and we will not sustain the rejection of this claim or, it
follows, of claims 2-8, which are dependent therefrom.
We reach the same conclusion, for the same reasons, with regard to independent
claims 8 and 9, which set forth the invention in somewhat different terms, but contain
2
essentially the same limitations. Thus, the rejection of claims 8-14 also is not sustained.
CONCLUSION
The rejection is not sustained.
The decision of the examiner is reversed.
2Claim 8 does not recite the EE-PROM device or the CD-ROM device.
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