Ex parte GOSS - Page 7




          Appeal No. 96-3704                                                          
          Application 08/216,474                                                      



          not expressly show an integrated circuit provided on the load               
          beam within the monocoque region.  The Examiner further states              
          that Morikawa teaches providing an integrated circuit on a                  
          load beam.  On page 5 of the Examiner's answer, the Examiner                
          argues that it would have been obvious to one of ordinary                   
          skill in the art to provide an integrated circuit chip on the               
          suspension load beam of Hashimoto as taught by Morikawa.  The               
          Examiner reasons that the modification would have been                      
          motivated in order to reduce external noise interference                    
          within the lead wires as expressly suggested by Morikawa.                   
                    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., 73 F.3d at               



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