Appeal No. 2000-1939 Application 08/791,281 (capacitors C2 & C3)." Answer at 5. 2 Nevertheless, we agree with Appellants that Gregorian would not have suggested to the artisan that the admitted prior art circuit suffers from the problem of capacitor discharge due to a leakage current from one or more of the switching transistors. Although, as the examiner correctly notes (Answer at 7-8), the admitted prior art circuit and Appellants' circuit are similar in that both include a capacitor having a terminal connected to two switches, the circuits are otherwise considerably different in structure and operation as regards the capacitors in question. Specifically, in the admitted prior art circuit both of the terminals of the capacitor are switched by switches operating at the fundamental clocking frequency (Fig. 2), whereas in Gregorian only one of the terminals of capacitor 23 is switched at all, let alone at the fundamental clocking frequency (i.e., by transistor 24 in response to signal N2). In view of these significant differences, we are not persuaded that one skilled in the art 2 As the examiner correctly notes (Answer at 6), a proper § 103(a) rejection need not be based on solving the same problem that is solved by the applicant's invention. See In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) ("As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor. In re Kronig, 539 F.2d 1300, 1304, 190 USPQ 425, 427-28 (CCPA 1976); In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972)."). -10-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007