Appeal No. 95-0678
Application 07/938,960
coat, would be substantially the same as applying the water
soluble powder coat to the seed surface in solution” (answer,
page 5).
The deficiency in the examiner’s argument is that the
examiner does not explain where the suggestion to coat seed by
wetting the seed and then applying an excess of water-soluble
powdered coating material to the seed is found in the prior art.
“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, 1783-84 (Fed. Cir. 1992). See also Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The examiner also argues that the prior art and appellant’s
claimed process “would produce the same coated seed” (answer,
page 10). As correctly pointed out by appellant (brief, page
20), since claim 10 is directed toward a process, the relevant
inquiry under 35 U.S.C. § 103 is not whether the product produced
by the process is the same as that of the prior art, but whether
appellant’s claimed process would have been obvious to one of
ordinary skill in the art. Furthermore, the examiner has not
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