Appeal No. 96-1425
Application No. 08/133,492
We reverse for the reasons given by appellants, amplified
as follows.
The examiner concedes, and we agree, that none of the
references teaches or suggests a rotor positional indicator
having equally spaced first and second areas “that are a whole
number multiple of the number of steps for one full revolution
of the rotor of the stepper motor” as recited in the claims.
To fill in that gap, the examiner states that the specific
number of areas “is considered a matter of convenience.”
Examiner’s Answer at 4.
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); In re Chu, 66 F.3d 292, 298-99, 36 USPQ2d 1089, 1094-95
(Fed. Cir. 1995).
In the present case, the examiner has not shown that the
prior art suggested the desirability of the modification.
Stating that the recited element is merely “a matter of
convenience” does not satisfy the examiner’s burden under In
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