Ex parte KULKA et al. - Page 5




          Appeal No. 1997-0199                                                        
          Application No. 08/199,480                                                  


          combination as providing a teaching of monitoring sensed data               
          at predetermined time periods with the Examiner suggesting                  
          (Answer, page 4) “...because the specific use of such in a                  
          tire parameter sensing apparatus is clearly suggested by                    
          Bowler.”                                                                    
               In response, Appellants assert that the Examiner has                   
          failed to set forth a prima facie case of obviousness since                 
          proper motivation for one of ordinary skill to make the                     
          Examiner’s proposed combination has not been established.                   
          Upon careful review of the applied prior art, we are in                     
          agreement with Appellants’ stated position in the Brief.  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).    In the present instance,                 
          although Dunn teaches the mounting of a transponder in a tire               
          and provides for interrogation from a remote source, Dunn’s                 
          disclosure is directed to an identification system for                      
          inventory purposes.  We fail to see how Dunn’s system which is              
          designed solely to provide tire identification information,                 
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