Appeal No. 1996-2986
Application 08/348,625
16 of the Brief, this is contrasted with the claim limitations
which require the development of a derivative trace of a first
measurement. Faced with this distinction, the Examiner seeks
to modify Potter by looking to some unspecified “general
knowledge” in the art. As with the rejection based on
Rietsch, the Examiner has not identified what aspect of this
“general knowledge” is being relied on, let alone provided any
rationale for making the modification. 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 Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1781-82 (Fed.
Cir. 1992). We are left to speculate why the skilled artisan
would modify the pole and zero analyzer of Potter to provide
for development of a derivative trace as claimed. The only
reason we can discern is improper hindsight reconstruction of
appellant’s claimed invention. Accordingly, since the
Examiner has not established a prima facie case of
obviousness, the 35 U.S.C. § 103 rejection of claims 1-11 and
21-29 based on Potter cannot be sustained.
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