Appeal No. 2004-0442
Application No. 09/222,953
Ono indicates (column 5, lines 34-35) that D3 has 15 bits,
whereas, the data sample, Di, has 8 bits (see column 5, lines 9-
10). Therefore, Ono fails to anticipate claims 4, 9, and 20 for
the additional reason that Ono's first output signal does not
have the same number of bits as the data sample.
As to the obviousness rejection of claims 5, 10, 16, and 21,
the examiner has presented no evidence to overcome the
deficiencies in the rejection of the base claims. Further, each
of the aforementioned claims recites that the register,
subtracter, and adder are all "included in the silicon of a
chip." The examiner (Answer, page 5) recognizes that Ono does
not disclose a silicon chip, but asserts that "the implementation
of a processing circuit in a silicon ship [sic, chip] is so well-
known in the art . . ., a person of ordinary skill in the art
would have found it obvious to do so in order to reduce cost and
circuitry area." Appellant (Brief, page 10) argues that the
examiner has failed to point to any teaching or suggestion in the
prior art for the proposed modification. A factual inquiry
whether to modify a reference must be based on objective evidence
of record, not merely conclusionary statements of the examiner.
See In re Lee, 277 F.2d 1338, 1342-43, 61 USPQ2d 1430, 1433 (Fed.
Cir. 2002). As the examiner has failed to supply any objective
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