Appeal No. 97-1504 Application No. 08/400,190 this discussion, it fails because it is merely the examiner’s opinion, unsupported by evidence. The third of the examiner’s theories is that Levine discloses an auto scroll switch, with regard to which “[t]here is no indication that it is necessary for switch (59) to be continuously actuated” (Answer, page 5). Levine’s explanation of the manner in which switch 59 affects the operation of the pager message display system is not crystal clear. However, even assuming, arguendo, that the examiner’s conclusion is correct, to modify the Wagai method in the manner proposed by the examiner would destroy the method espoused by Wagai as the inventive solution to the problem, which in our view would operate as a disincentive to the artisan. Moreover, we fail to perceive any suggestion in either of the references which would have motivated one of ordinary skill to make such a wholesale change in the Wagai method, except the hindsight accorded one who first viewed the appellant’s disclosure. This, of course, is impermissible. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992). 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007