Appeal No. 96-3302
Application No. 08/160,119
device could be made to perform the steps of claim 1 and to
repeat them as claimed even though there is no specific
teaching in Harmon to do so. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992);
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). There is no suggestion in Harmon that the
specific steps of claim 1 should be performed repetitively and
altered with each repetition as claimed. The examiner’s
suggestion that Harmon could perform the claimed invention
does not establish a prima facie case of obviousness within
the meaning of 35 U.S.C. § 103. Therefore, we do not sustain
the obviousness rejection of independent claim 1 or of claims
2-4 which depend therefrom.
Independent claim 5 is similar to claim 1. The
preamble of claim 5 ends with the phrase “comprising the steps
of repeatedly:” [emphasis added]. Five steps are then recited
which repetitively form sums of data by masking and rotating
data as a function of the size of a “portion.” A sixth step
7
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