Appeal No. 95-2917
Application 08/082,895
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). We note that none
of the references address the problem that is being solved by
the Appellants, which is to prevent destabilization of the MR
element.
We agree that the references teach magnetoresistive
elements, but the Examiner has failed to show that the prior
art suggested the desirability of the Examiner's proposed
modifications. 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 or shown to be common
knowledge 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,
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