Appeal No. 1996-3362
Application No. 08/258,601
motivation for the proposed combination is lacking. In
particular, Appellants argue that neither Levine nor
Faulkerson provide motivation for providing a pressure switch
for selecting between the absolute pointing mode or the
relative pointing mode.
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). Furthermore, the
Federal Circuit reasons in Para-Ordnance Mfg. Inc. v. SGS
Importers Int'l Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237,
1239-40 (Fed. Cir. 1995), cert. denied, 519 U.S. 822 (1996),
that for the determination of obviousness, the court must
answer whether one of ordinary skill in the art who sets out
to solve the problem and who had before him in his workshop
the prior art, would have been reasonably expected to use the
solution that is claimed by the Appellants.
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