Appeal No. 1998-0126
Application 08/272,700
basis of motivation between the two references. However, we
find no such basis in this instance. Appellants reduce ozone
generation via their combination of elements, in the case of
claim 1, the combination of sharp discharge ends with an AC
voltage component. Appellants make no mention of the use of
heat for the decomposition of ozone inherently generated.
Myochin uses AC to generate heat that decomposes ozone
inherently generated (column 3, lines 29-34). Again, we find
no motivation to combine Compton and Myochin.
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. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
8-8-
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