Appeal No. 97-2582
Application 08/484,353
does not itself render obvious the merging of all types of
functions on a single control. We reject the examiner’s
position that any combination of functions to be merged on a
single control button would have been obvious, in light of the
existence of a multi-function control switch.
At some point, the inherent advantages of using one
switch instead of two is insufficient to overcome the
disparate nature of certain functions to be alone considered a
reasonable motivation to combine those functions on a single
control. In our view, that is the case here. Accordingly,
the examiner has failed to make out a case of prima facie
obviousness.
The 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); 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., Inc. v. SGS
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