Appeal No. 96-4197
Application No. 08/425,261
insertion rods to obtain Appellant’s invention as recited in
the claims. The Examiner further states that the other
details of the hydraulic system recited in the dependent
claims are all obvious for these kinds of systems. The
Examiner offer no showing of evidence to support the
Examiner's conclusions.
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.
On page 4 of the answer, the Examiner reasons that it
would have been obvious to those skilled in the art to make
the Examiner's proposed modification because hydraulic motive
means are the state of the art for force/pressure applications
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