Appeal No. 96-0215
Application 07/975,908
for a hierarchical set of filtering operations and thus retains
great flexibility in the types of queries that can be carried
out.
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 agree that Shelton, Jr. teaches a filter and encoded
mask, but the Examiner has failed to show that the prior art
suggested the desirability of the Examiner's proposed modifi-
cation. Furthermore, we cannot find that Appellants' invention
is obvious just because the laws of physics allow for the
Appellants' invention. This hindsight view is not evidence that
those skilled in the art would have reason to make the
modification. 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
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