Appeal No. 96-2878
Application 08/313,631
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to substitute a magnetic feeding arrangement, such as described by
Yamashita, et al., for the polygonal bar 7 of Schnall, et al., if magnetic toner were
involved . . . . This substitution is considered obvious to the ordinary routineer in the art
since both the rotating bar of Schnall, et al. and the rotating magnet of Yamashita et al.
are used for the same purpose, i.e. transporting toner from one location to another.
[Emphasis added]
Whether the substitution of the magnetic feeder of Yamashita for the bar 7 of Schnall is obvious
begs the question. One must first explain why it would have been obvious to use a magnetic toner in
Schnall.
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). "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 1085, 1087, 37
USPQ2d 1237, 1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
Claims 1 and 19 both recite “magnetic material” five times throughout each claim. Schnall is
devoid of any mention of magnetic material. And, the Examiner makes no statement, other than “if”,
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