Appeal No. 2004-1839
Application No. 09/921,604
other driving circuit. Yet, it is the examiner’s position that the addition of another buffer
in Young in order to increase driving ability is equivalent to replacing a driving circuit
with a higher driving ability circuit. Appellant takes issue with this analysis, arguing, at
page 2 of the reply brief, that the examiner is illogically contending that “when an effect
(i.e., driving ability increases) occurs by a well known method, another method which
results in the same effect is therefore also well known.”
It appears that appellant is arguing that just because two methods reach the
same result, this does not make one of the methods, per se, obvious over the other.
With this general statement, we agree. Expedients which are functionally equivalent to
each other are not necessarily obvious in view of one another. Equivalency is not a test
for obviousness. In re Scott, 323 F.2d 1016, 1019, 139 USPQ 297, 299 (CCPA 1963);
In re Flint, 330 F.2d 363, 367, 141 USPQ 299, 302 (CCPA 1964).
However, in the instant case, we view the examiner’s position as contending that
if one has a driving circuit A and it is “replaced” with a driving circuit B, having a higher
driving ability than A (which is what is claimed), this is no different than the “addition” of
a driving circuit C, to driving circuit A, which results in a higher driving ability, because
the circuit which now has both driving circuits A and C can be said to have had driving
circuit A “replaced” with the driving circuit combination A/C.
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