Appeal No. 1997-4043 Page 9
Application No. 08/124,332
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)). The
mere fact that prior art may be modified as proposed by an
examiner does not make the modification obvious unless the
prior art suggested the desirability thereof. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992); In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
Here, the examiner admits that Lautzenheiser fails “to
explicitly teach the sealing of a perimeter of said processing
surface in order to form an acoustically reflective volume
therebetween ....” (Examiner’s Answer at 4.) The admission,
albeit correct, is an understatement. Although the reference
shows positioning a “test piece” on two triangular objects,
Fig. 10, the examiner has not identified anything in
Lautzenheiser that would have suggested sealing the test piece
to the objects. Neither has he provided any evidence to
support his allegation that such sealing would have permitted
the test piece to be “‘tested’ again,” (Examiner’s Answer at
4), or that such testing (again) would have been desirable.
In addition, the examiner has not contested the appellant’s
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