Ex parte KLOKKERS-BETHKE et al. - Page 9




          Appeal No. 94-3564                                                          
          Application 07/890,314                                                      


          blueprint, we find that the cited prior art provides no                     
          suggestion which would have led a person having ordinary skill              
          from “here to there”, i.e., from the nitroglycerin spray of Aouda           
          to the claimed subject matter.  Ex parte Tanksley, 37 USPQ2d                
          1382, 1386 (BPAI 1994).  We have no doubt that the prior art                
          could be modified in such manner to arrive at the subject matter            
          defined in claims 16 through 24.  The mere fact, however, that              
          the prior art could be so modified would not have made the                  
          modification obvious unless the prior art suggested the                     
          desirability of the modification.  In re Gordon, 733 F.2d 900,              
          902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).  That is not the case            
          here.  Accordingly, we reverse the  103 rejection set forth by             
          the examiner.                                                               
               Having carefully reviewed Aouda, Silson, and Nagy, we                  
          conclude that the examiner has not established a prima facie case           
          of obviousness of claims 16 through 24.  Accordingly, we find it            
          unnecessary to discuss the Lang declaration which is relied on by           
          appellants as rebutting any such prima facie case.                          

                                     CONCLUSION                                       

               For the reasons set forth in the body of this opinion, we              
          reverse the examiner’s rejection of claims 16 through 24 under 35           

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