Appeal No. 1999-0166
Application No. 08/656,544
specifically describing how the teachings would be combined,
nor how any such combination would satisfy the requirements of
appealed independent claims 1 and 9. This does not persuade
us that one of ordinary skill in the art having the references
before her or him, and using her or his own knowledge of the
art, would have been put in possession of the claimed subject
matter. 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).
We further agree with Appellant that even assuming,
arguendo, that the modification of Greenberger suggested by
the Examiner were made, the resultant combination would not
satisfy the claimed requirements. Each of the appealed
independent claims 1 and 9 sets forth specific criteria for
the selection between the system clock signal and the test
clock signal. In contrast, as asserted by Appellant (Brief,
page 6), the Ganapathy reference, applied by the Examiner to
address the claimed clock selection feature, discloses nothing
9
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