Appeal No. 95-0005
Application 08/141,412
system, the measurements are ultimately somehow determined
somewhere. The determination must be done in a transponder
which in turn communicates the results to an interrogator.
Also, the prior art must reasonably suggest the specific
manner of communication claimed by the appellant.
Responding to the appellant’s argument that the claimed
invention is not mechanical as is shown in Lapsley, the
examiner states (answer at 7) that to replace mechanical
registers and scan means with electronic chips would not give
unexpected results. However, 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).
Moreover, the examiner may not properly account for the
myriad of specific differences between the claimed invention
and the disclosed
system of Lapsley by simply noting that one system is
mechanical and the other electronic. That is over
generalizing the claimed invention. Even if we assume that an
electronic version of Lapsley’s system would be desirable, the
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