Appeal No. 96-2724
Application 08/343,201
omission of an element and its function in a
combination is an obvious expedient if the
remaining elements perform the same functions
as before,
we observe, as appellant has on page 7 of the brief, that the
Court has also recognized that this is not a mechanical rule, and
that such language in Karlson was not intended to short circuit
the determination of obviousness mandated by 35 U.S.C. § 103.
See In re Wright, 343 F.2d 761, 769-770, 145 USPQ 182, 190 (CCPA
1965). Thus, as in reviewing any obviousness determination, we
must first look to the prior art and ascertain whether the prior
art teachings would appear to be sufficient to one of ordinary
skill in the art to suggest making the claimed substitution or
other modification proposed by the examiner. See, e.g., In re
Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984).
In this particular case, we share appellant's view as
expressed on pages 4-8 of the brief and in the reply brief that
the elimination of the fluid from the chambers of the display
apparatus of Swartz would not have been obvious to a person of
ordinary skill in the art based on any teaching, suggestion or
5
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