Appeal No. 2004-0115 Page 6
Application No. 09/363,637
equation: Xi+1 = Xi + Xi*IR2." Claims 23, 26, 30, 31, and 35 include limitations similar to
those of claim 22.
2. OBVIOUSNESS DETERMINATION
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious. "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, 178-84 (Fed. Cir. 1992) (citing In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). "[T]he factual
inquiry whether to combine references must be thorough and searching." McGinley v.
Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60 USPQ2d 1001, 1008 (Fed. Cir. 2001).
This factual question cannot "be resolved on subjective belief and unknown authority,"
In re Lee, 277 F.3d 1338, 1343-44, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002); "[i]t must
be based on objective evidence of record." Id. at 1343, 61 USPQ2d at 1434. Although
couched concerning combining references, we hold the same requirements apply to
modifying references. Namely, the factual inquiry whether to modify references must be
thorough and searching. The inquiry cannot be resolved on subjective belief and
unknown authority; it must be based on objective evidence of record.
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