Appeal No. 1995-5010
Application 08/116,261
this view. Appellant argues, and we agree, that there is no
reason in Takahashi to consider such a limiter and further how
this limiter would operate in Takahashi’s transducer is not
explained by the Examiner [brief, pages 4, 7 and 8]. The
Federal Circuit states that “[the] 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 Fitch,
972 F.2d 1260, 1266 n.4, 23 USPQ2d 1780, 1783-84 n.4 (Fed.
Cir. 1992), citing In re Gordon, 773 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. v. SGS
Importers Int’l, 73 F.3d 1087, 37 USPQ 2d at 1239 (Fed.
Circuit. 1995), citing W. L. Gore & Assocs., v. Garlock, Inc.,
721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13 (Fed. Cir.
1983). Furthermore, the Examiner contends that Wilson’s
teachings would have made it obvious to incorporate an
inductor in Takahashi to meet the limitation: “the
sinusoidally oscillating voltage source amplifier in parallel
with a tuning inductor” (claim 1, lines 21 to 22). The
-8-
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