Ex parte HOUSTON

Board of Patent Appeals and Interferences

Jul 23, 1998

08101348 (B.P.A.I. Jul. 23, 1998)

Application for patent filed August 2, 1993. 1
According to appellant, this application is a continuation of
Application 07/719,900 filed June 24, 1991, now abandoned.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCE
_____________
Ex parte THEODORE W. HOUSTON
_____________
Appeal No. 95-1199
Application 08/101,3481
____________
ON BRIEF
____________
Before KRASS, FLEMING and CARMICHAEL, Administrative Patent
Judges.
CARMICHAEL, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-1199
Application 08/101,348
-2-
This is an appeal from the final rejection of claims
1-13, 24-26, 30, and 31. Claims 14, 16-20, 27-29 and 32-36
have
been indicated as allowable, and claims 15 and 21-23 have been
canceled.
Claim 1 reads as follows:
1. A bi-stable logic device comprising:
first and second inverters each said first and
second inverters including an input and an output;
a first resistor between the input of said first
inverter and the output of said second inverter;
a second resistor coupled between the input of said
second inverter and the output of said first inverter;
a capacitive coupling between the input of said
first inverter and the output of said first inverter such that
said first resistor isolates said capacitive coupling from the
output of said second inverter and said second resistor
isolates said capacitive coupling from the input of said
second inverter.
The Examiner’s Answer cites the following prior art:
Iizuka 4,532,609 July 30,
1985
OPINION
Appeal No. 95-1199
Application 08/101,348
-3-
Claims 1-13, 24-26, 30, and 31 stand rejected under
35 U.S.C. § 103 as unpatentable over admitted prior art in
view of Iizuka. According to the examiner, it would have
obvious to one of ordinary skill in the art to have used
capacitors to couple the inverters of admitted prior art
Figure 1 “since Iizuka shows resistors and capacitors used to
couple inverters.” Examiner’s Answer at 4, lines 1-5.
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). The examiner has not explained how Iizuka suggested
the desirability of adding capacitors to the admitted prior
art of Figure 1. The examiner’s statement that “Iizuka shows
resistors and capacitors used to couple inverters” does not
identify any reason why one skilled in the art would add
capacitors to the Figure 1 prior art. Upon our own review of
the references, we are unable to find where the prior art
suggested the desirability of the modification.
Thus, the rejection is not sustained.
Appeal No. 95-1199
Application 08/101,348
-4-
CONCLUSION
The rejection of Claims 1-13, 24-26, 30, and 31 is
not sustained.
REVERSED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
MICHAEL R. FLEMING ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 95-1199
Application 08/101,348
-5-
JAMES T. CARMICHAEL )
Administrative Patent Judge )
Ira S. Matsil
Texas Instruments Incorporated
Patent Department, M/S 219
P.O. Box 655474
Dallas, TX 75265