Appeal No. 97-1504
Application No. 08/400,190
this discussion, it fails because it is merely the examiner’s
opinion, unsupported by evidence.
The third of the examiner’s theories is that Levine
discloses an auto scroll switch, with regard to which “[t]here
is no indication that it is necessary for switch (59) to be
continuously actuated” (Answer, page 5). Levine’s explanation
of the manner in which switch 59 affects the operation of the
pager message display system is not crystal clear. However,
even assuming, arguendo, that the examiner’s conclusion is
correct, to modify the Wagai method in the manner proposed by
the examiner would destroy the method espoused by Wagai as the
inventive solution to the problem, which in our view would
operate as a disincentive to the artisan. Moreover, we fail
to perceive any suggestion in either of the references which
would have motivated one of ordinary skill to make such a
wholesale change in the Wagai method, except the hindsight
accorded one who first viewed the appellant’s disclosure.
This, of course, is impermissible. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007