Appeal No. 96-2418 Application 08/137,267 skilled in the art to obtain Appellant’s invention does not establish a suggestion to make such a modification. Appellant argues that one of ordinary skill in the art would have no motivation or incentive to make the Examiner’s proposed modification. 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). "Obviousness may not be established using hindsight or in view of the teachings or suggestions of the inventor." Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). Upon reviewing Honey, we fail to find any suggested desirability of modifying Honey to obtain Appellant’s invention as recited in Appellant’s claims 1 and 9. 7Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007