Appeal No.97-0582
Application 08/179,926
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
Appellants argue on pages 8 through 15 of the brief that
Portanova and Onishi fail to suggest modifying Portanova to
provide a CISC decoder in addition to Portanova's RISC decoder as
recited in Appellants’ claims. On page 4 of the answer, the
Examiner argues that it would have been obvious to provide two
instruction decoders because the use of two separate instruction
decoders allows for simpler and more efficient design of the
decoders.
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). "Obviousness may not be established using
hindsight or in view of the teachings or suggestions of the
inventor." Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at
1239, citing W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311,
312-13.
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