Appeal No. 95-1220
Application 07/972,279
skilled in the art would have found it obvious to modify the
Boone equation (22) to obtain Appellants’ claimed equation.
The Appellants submit that the Examiner’s reasoning is done
with the benefit of hindsight.
It is the burden of the Examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the reasonable teachings or
suggestions found in the prior art, or by a reasonable
inference to the artisan contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). In addition, 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, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). "Additionally, when deter-mining
obviousness, the claimed invention should be considered as a
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