Appeal No. 95-4091
Application No. 08/106,742
the prior art may be modified to reflect a particular feature
of the claimed subject matter, such as the 85% transmittance,
which modification is not made, does not make the claimed
subject matter obvious. The desirability of such modification
must be suggested by the prior art. See In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1783-1784 (Fed. Cir. 1992).
Specifically, Sato, in Table I, discloses transparency
percentages between 53% and 72%. There is no suggestion in
Sato of obtaining transparency in excess of 72% nor even the
desirability of achieving a transparency of greater than 72%.
Accordingly, even were the examiner correct in his analysis
that the conditions of Sato’s process could be modified to
obtain a transparency of 85% or more, the modification
nonetheless would have been unobvious as the prior art fails
to suggest the desirability of the modification.
Moreover, we disagree with the examiner’s analysis of the
operating conditions for Sato’s process and the conclusions
drawn therefrom. We recognize that in considering the
disclosure of Sato, the examiner may take into account not
only the specific teachings, but also inferences which one
skilled in the art would reasonably have been expected to draw
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