Appeal No. 96-2854
Application No. 08/119,980
burden of the Examiner to establish why one having ordinary
skill in the art would have been led to the claimed invention
by the reasonable teachings or suggestions found in the prior
art, or by a reasonable inference to the artisan contained in
such teachings or suggestions. In re Sernaker, 702 F.2d 989,
995, 217 USPQ 1,
6 (Fed. Cir. 1983). In addition, the Federal Circuit states
that "[t]he 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), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984).
Appellant argues that the Examiner has supplied no
teaching or suggestion of the comparing step of claim 2 nor
the monitoring data processed by a processor of claim 3. The
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