Appeal No. 1998-2556
Application 08/571,044
the examiner does not support the obviousness rejection as
formulated by the examiner. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992);
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). Grotz taken alone (with or without general
knowledge) does not suggest transfer functions having the
properties recited in claim 17. The only basis for making the
modification proposed by the examiner comes from an improper
attempt to reconstruct appellants’ invention in hindsight.
Therefore, we do not sustain the rejection of claims 17 and 21
based on Grotz taken alone.
Although dependent claims 3, 6, 7, 11, 13 and 18-20
are rejected using the additional teachings of Zdepski, Stott
or Ishii, none of these additional references overcomes the
basic deficiency in Grotz discussed above. Therefore, we also
do not sustain any of the rejections of claims 3, 6, 7, 11, 13
and 18-20.
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