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.
7
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007