Appeal No. 1998-0660 Application No. 08/584,501 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. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13. As pointed out above, many of the limitations of claim 1 are missing, motivation is lacking for the suggested modification of “selectively actuating” and, we might add, there is no clear and adequate motivation to combine the cited references (although the basic combination of Maeda and Gordon was not challenged by Appellants). Thus, we will not sustain the Examiner’s rejection of claim 1. 9Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007