Appeal No. 2000-0452
Application No. 08/622,389
When patentability turns on the question of
obviousness, the search for and analysis of the prior
art includes evidence relevant to the finding of
whether there is a teaching, motivation, or suggestion
to select and combine the references relied on as
evidence of obviousness. See, e.g., McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60
USPQ2d 1001, 1008 (Fed. Cir. 2001) (“the central
question is whether there is reason to combine [the]
references,” a question of fact drawing on the Graham
factors).
Having reviewed the statement of obviousness in these
rejections, the examiner-advocated motivation to make the
combination and the examiner’s response to arguments by
appellants for lack of motivation, we find no factual basis or
motivation for suggesting the combination as suggested by the
examiner. We find that each of the Nakajima, Kamisaka and
Tomisawa reference is concerned with the operation of a delay
circuit and changing the circuit operation in response to a
reference signal. None of these references suggests or teaches
that Nakajima could be combined with either Tomisawa or Kamisaka.
Therefore, we agree with appellants’ position that there is no
motivation as required by Lee, supra, to combine Nakajima with
Tomisawa or Kamisaka, there being no argument regarding the
teachings of Chen regarding the use of MIS transistors in place
of MOS transistors in the formation of the delay circuits.
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