Appeal No. 1999-0475
Application No. 08/402,031
into a format understood by the printer.” (Answer, page 7).
After reviewing Appellants’ arguments in response, we are
in agreement that the Examiner has not established a prima
facie case of obviousness. Besides the fact that, as pointed
out by Appellants, the claims do not require any format
conversion of documents and forms, the express disclosure of
Montagna (column 5, lines 17-21) is that, regardless of the
origin of the stored data, the data is stored in only one
format. Given this disclosure of Montagna, it is not evident
to us from the Examiner’s line of reasoning in the Answer how
and in what manner Montagna would be modified by Freiman to
arrive at the claimed invention. 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). Accordingly, since the Examiner has not
established a prima facie case of obviousness, the rejection
of independent claim 19, and claims 20-24, 26-30, and 32
dependent thereon, over the combination of Montagna and
Freiman is not sustained.
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