Appeal No. 2000-2037
Application No. 08/810,055
pages 4 and 5 of the examiner’s answer further offers an argument
why it would have been obvious to space in parallel a first and
second resistive material with a first and second pressure
applying means which would automatically result in two distinct
pressure exerting means. However, we, like appellants, do not
find any factual evidence in forming the combination of Grosse-
Wilde and Karlstrom which would lead an artisan to come up with
the arrangement recited in the claims without the benefit of
implying the roadmap of the appellants’ invention. Therefore, we
do not agree with the examiner’s position that it would have been
obvious to add two separate and distinct means of compressive
pressure applying means to the sets of electrodes as recited in
the claims.
Regarding the arguments of the combining of the references,
the Federal Circuit states that “[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)
(citing In re Gordon, 773 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
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