Appeal No. 1999-2849
Application No. 08/690,966
We first turn to the rejection of claims 1 through 7, 9
through 11 and 13 as being unpatentable over Storck. On pages
8 through 10 of the brief, Appellants argue that Storck fails
to teach or suggest "two insertion slots provided in an owner
side and an other party side respectively, and an IC card
operation unit for reading and writing electronic information
between two IC cards inserted into said two insertion slots in
mutually different depths" as recited in Appellants'
independent claim 1.
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, 1783-24
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that "[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem."
Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d
5
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