Appeal No. 96-4074
Application 08/387,669
Matsui teaches that a physical image is scanned to produce an array of digital values, that the array is
applied to a predetermined score calculation in which a score is calculated for each set of candidate
center locations and that the center is determined by the candidate having the highest score as recited in
Appellant's claims 1 through 10. Furthermore, we fail to find that those skilled in the art would have
found that the missing descriptive matter is necessarily present in the thing described in Matsui.
Furthermore, we fail to find any suggestion of modifying Matsui's method of determining the
center of gravity to provide a method for finding a center of an approximately circular pattern in a
physical image as recited in Appellant's claims. 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. v. SGS Importers Int'l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W. L. Gore & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
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