Appeal No. 97-0124
Application No. 08/273,672
provide a higher or lower voltage to an electrode having wider or
narrower connecting elements is a matter of design choice.
After careful review of Appellant’s arguments and the
applied Guzowski reference, we are in agreement with Appellant’s
stated position in the Briefs. The Examiner’s finding that the
application of a lower voltage to the electrode having the wider
connecting elements is an obvious design choice is not supported
by the record. 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). Although
Guzowski suggests a differing voltage relationship between
adjacent electrodes (column 3, line 25), we can find no basis on
the record for the Examiner’s conclusion that the skilled artisan
would find it obvious to apply a particular higher or lower
voltage to a particular electrode. It is our opinion that this
modification of the prior art could only come from an improper
hindsight reconstruction of the invention by the Examiner. In
view of the above discussion we cannot sustain the Examiner’s
obviousness rejection of claims 2 and 5. Further, since all of
the limitations of claims 2 and 5 are not suggested by the
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