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 7Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007