Appeal No. 95-2050
Application 07/888,098
We agree with appellants.
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 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992); In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95
(Fed. Cir. 1995).
Because the examiner has not established that the
prior art suggested the desirability of the modification, we
will not sustain the rejections of claims 5, 6, 19, and 20.
Claim 7
Claim 7 falls together with claim 4 because
appellants have presented no arguments for the separate
patentability of claim 7. 37 CFR § 1.192. Had appellants
made a separate argument, the examiner could have cited
Morganstein, column 2, lines 3-6, for suggesting the recited
feature.
Claims 8, 9, 21, and 22
-7-
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