Appeal No. 95-3091
Application 08/093,311
obvious to one with ordinary skill in the art to select a
shorter error-correction-code for the outer tracks and a
longer error-correction-code for the inner tracks.
The problem with the examiner’s position, however,
is that the explanation largely coincides with the appellant’s
reasons underlying the claimed invention and does not stem
from either Yoshimura, McCullough, or a combination thereof.
On this record and based on the parts of the cited references
discussed by the examiner, we conclude that the examiner’s
rationale is gleaned solely from hindsight based on the
appellant’s own disclosure. That is improper. 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 Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor. Para-Ordnance Mfg. Inc. v. SGS
7
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