Appeal No. 96-4189
Application 08/279,157
Furthermore, we fail to find any suggestion of
modifying Jacob to obtain the invention as recited in
Appellant’s claims. 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). "Obviousness may not be established using hindsight or
in view of the teachings or suggestions of the inventor."
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
Therefore, we will not sustain the rejection of claims 8
through 16 under 35 U.S.C. § 103 as being unpatentable over
Jacob in view of Lewiner and van den Boom.
We have not sustained the rejection of claims 8
through 16 under 35 U.S.C. § 103. Accordingly, the Examiner's
decision is reversed.
REVERSED
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