Appeal No. 95-0744
Application 07/758,460
The reason, suggestion, or motivation for a modification
may come from what is known to the person of ordinary skill as
well as from a specific teaching in a reference.
See In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443,
1446-47 (Fed. Cir. 1992) (Nies, C.J., concurring). The
examiner attempts to analogize the problem/solution in this
case to isolating a portion of an electrical circuit for test
purposes. Appellants consider these methods to be from
nonanalogous art (Brief, pages 8-9). We agree with the
examiner that it is a fundamental engineering technique in
many fields (electrical, mechanical, and even chemical) to
isolate portions of a system for test purposes. However,
absent some indication in the references that there was a need
to test the motor for restriction before connecting it to the
power steering mechanism, it appears that the examiner is
using hindsight to work backwards towards appellants' solution
using appellants' disclosure as a guide. "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
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