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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