Ex parte GATTI - Page 5




          Appeal No. 95-1515                                                          
          Application 08/027,656                                                      


          hardly be inclined to combine any of the first group of                     
          references (Vitou, Black, Mumpower and Wyller) with the second              
          group of references (Ramsdell, Papritz, Sayanagi and Murphy).               
               It is the burden of the Examiner to establish why one                  
          having ordinary skill in the art would have been led to the                 
          claimed invention by the reasonable teachings or suggestions                
          found in the prior art, or by a reasonable inference to the                 
          artisan contained in such teachings or suggestions.  In re                  
          Sernaker, 702 F.2d 989,                                                     
          995, 217 USPQ 1, 6 (Fed. Cir. 1983).  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).  In addition, the Federal Circuit reasons in Para-              
          Ordnance Mfg. Inc. v. SGS Importers Int’l Inc., 73 F.3d 1085,               
          1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert.                    

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