Appeal No. 96-1347
Application 08/207,469
Claim 4 requires “sensing said fingertip and said thumb.”
The examiner acknowledges that Logan does not teach sensing
the thumb, but offers alternative theories for obviousness.
First, the examiner posits that a skilled artisan would
have moved Logan’s button to avoid accidental actuation.
However, the examiner cites no basis in the prior art for such
a suggestion. 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 Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). Finding no such suggestion in the prior art, we will
not adopt the examiner’s rationale.
Second, the examiner points to Logan’s disclosure of
using the opposite hand to hold down the device. The examiner
states that this suggests sensing the thumb. While this may
be a plausible interpretation of “sensing,” it is inconsistent
with the disclosure in this case, which describes sensing the
thumb as distinct from sensing any other finger. Thus, we
cannot sustain the examiner’s rejection of Claim 4.
Claim 7
3
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