Appeal No. 2006-2332
Application No. 09/751,610
In our view, the examiner has provided evidence sufficient to show prima facie
obviousness of the subject matter as a whole of instant claim 20. Li does not show or
otherwise describe the details of the five bit shift register that comprises Johnson
counter 114. We find that the combination of Li and Epstein would have suggested
using five JK flip-flops to effect the Johnson counter that is taught by Li. The suggestion
from the prior art for the combination is as basic as suggesting how the artisan should
construct the Johnson counter described by Li. The suggestion to combine may come
from the prior art, as filtered through the knowledge of one skilled in the art. Motorola,
Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481, 1489 (Fed. Cir.
1997); see also Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025, 226
USPQ 881, 886-87 (Fed. Cir. 1985) (“[T]he suggestion to modify the art to produce the
claimed invention need not be expressly stated in one or all of the references used to
show obviousness. ‘Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.’”) (quoting In re Keller, 642
F.2d 413, 425, 208 USPQ 871, 881).
With respect to the alleged lack of a “reasonable expectation of success,” the
examiner has provided a reasonable basis for why the Johnson counter described by Li
would be expected to operate if implemented with five JK flip-flops as suggested. If, in
fact, the Li device would fail to operate within the scope of the method set forth by
instant claim 20 if the Johnson counter were implemented with five JK flip-flops,
appellant could have provided evidence, or at least a reasoned explanation based on
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