Appeal No. 95-4010
Application 08/082,338
and 8, and the response means in columns 6 and 8. The
Examiner then states that Zolnowsky does not teach a means for
preventing initiation of the execution of the undefined target
instruction as claimed but argues it would have been obvious
to one of ordinary skill in the art to adapt such a means into
the Zolnowsky system in view of Tanagawa.
The Federal Circuit states that "[t]he 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), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Furthermore,
rejecting patents solely by finding prior art corollaries for
the claimed elements would permit an examiner to use the
claimed invention itself as a blueprint for piecing together
elements in the prior art to defeat the patentability of the
claimed invention. Such an approach would be an illogical
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