Appeal No. 95-4747
Application No. 08/063,297
of ordinary skill in the art. See In re Rinehart, 531 F.2d
1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that
the prior art could be modified as proposed by the examiner is
not sufficient to establish a prima facie case of obviousness.
See In re Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992).
In our view, the motivation relied upon by the examiner
for combining the teachings of the references to arrive at
appellant’s claimed invention herein appears to have come from
the disclosure of appellant’s invention in his specification
rather than from the prior art. Accordingly, based on the
present record, the applied prior art would not have rendered
the specifically claimed process herein prima facie obvious.
Because we reverse on the basis of failure to establish a
prima facie case of obviousness, we need not reach the issue
of the sufficiency of appellant's showing of alleged
unexpected results. See In re Geiger, 815 F.2d 686, 688, 2
USPQ2d 1276, 1278 (Fed. Cir. 1987).
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