Appeal No. 1997-0317
Application No. 08/160,275
art”.
On the other hand, IBM gives no inkling of its use
in a print head. Looking at IBM, we only find suggestions of
use for multiple-bit position shifting, exponent incrementing/
decrementing, and final cycle output signal.
The Examiner’s purpose for combining, “enhancing
shifting speed”, is found in neither reference and is not seen
as a motivation to combine.
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.
Since there is no evidence in the record that the
7
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007