Appeal No. 97-1564
Application 08/017,794
using the monitor identification lines as recited in Appellants’
claims. We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching in a
prior art reference, common knowledge or capable of
unquestionable demonstration. Our reviewing court requires this
evidence in order to establish a prima facie case. In re Knapp-
Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961). In re
Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA 1966).
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). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553,
220 USPQ at 311, 312-13. Upon reviewing IBM, Dewa and Abbiate,
we fail to find any suggested desirability of modifying IBM to
6
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007