Appeal No. 2000-2251 Page 3
Application No. 08/902,206
Claims 2, 9-11, 13-15, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over U.S. Patent No. 6,161,124 (“Love”) in view of M. Morris Mano, Computer
Engineering: Hardware Design (1998) (“Mano”).
OPINION
Rather than reiterate the positions of the examiner or appellant in toto, we
address the main point of contention therebetween. Admitting that “Love does not
teach the . . . a decoding circuit as claimed,” (Examiner's Answer at 3), the examiner
concludes, "it would have been obvious to one of ordinary skill in the art at the time of
applicant's invention to have replaced the non-decoding logic circuitry of Love with
decoder circuitry, as taught by Mano in order to allow more programming options per
I/O pin, as a matter of design choice." (Id. at 4.) The appellant argues, "there is no
suggestion or motivation to combine the references. . . .” (Appeal Br. at 23.)
“[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants.” In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). “[T]he factual inquiry whether to combine
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