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Ex parte SHINBASHI et al. - Page 7
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Board of Patent Appeals and Interferences > 1997 > Ex parte SHINBASHI et al. - Page 7
Appeal No. 95-3710
Application 07/621,005
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), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). "Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor." Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at
1087, 37 USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
Without such evidence, we find that the Examiner has not carried
the burden of establishing that the prior art would have
suggested the desirability of the Examiner's proposed
modification. Therefore, we have not sustained the Examiner's
rejection of Appellants' claims.
In view of the foregoing, the decision of the Examiner
rejecting claims 6 through 8 and 19 through 23 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
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Last modified: November 3, 2007
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