Appeal No. 95-3498
Application 08/176,330
claim 8.
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). However, the Federal Circuit reasons
in Para-Ordnance Mfg., 73 F.3d at 1087-88, 37 USPQ2d at 1239-
40, that for the determination of obviousness, the court must
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