Appeal No. 2000-2207
Application No. 08/968,379
disclosure of Thrower coincides with that of Appellants, i.e.,
the PD (power down) signal operates to inactivate the bus
terminators to accommodate additional devices added to the SCSI,
and provides no determination as to whether a terminator or an
external device is present or absent as set forth in Appellant’s
claims.
We also agree with Appellants that Hiroyuki, applied by the
Examiner to provide a teaching of automatic termination of a bus
line, has no disclosure of a sensing line common to all of the
bus signal lines, as also set forth in the appealed independent
claims. Given these deficiencies in the disclosures of the
applied prior art, we can find no teaching or suggestion, and the
Examiner has pointed to none, as to how and in what manner the
Thrower and Hiroyuki references might be combined to arrive at
the claimed invention. The mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992).
It is also our view, that, even assuming, arguendo, that
proper motivation was established for modifying Thrower with
Hiroyuki, there is no indication as to how such modification
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