Appeal No. 2001-1448
Application No. 09/121,036
more to the point in the present appeal, we observe that the mere
fact that some prior art reference may be modified in the manner
suggested by the examiner does not make such a modification
obvious unless the prior art suggested the desirability of the
modification. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir 1984). Here, the prior art relied upon by
the examiner contains no such suggestion.
Since we have determined that the teachings and suggestions
found in Song and Kikuchi would not have made the subject matter
as a whole of independent claim 12 on appeal obvious to one of
ordinary skill in the art at the time of appellant's invention,
we must refuse to sustain the examiner's rejection of that claim
under 35 U.S.C. § 103(a). It follows that the examiner's
rejection of dependent claims 13 through 17 and 20 based on Song
and Kikuchi will likewise not be sustained.
With respect to the examiner's rejection of claims 18, 19
and 21 through 25 under 35 U.S.C. § 103(a) as being unpatentable
over Song in view of Kikuchi and further in view of Kim, we agree
with appellant's assessment set forth on pages 11-16 of the
brief. More particularly, even though we would agree with the
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