Appeal No. 1997-0318
Application 08/135,173
course of replacing an old battery. No mention is made of any static electricity. Similarly, Ishikawa
does not suggest anything about static electricity being a problem in affecting the data in the control
means of the camera. The Federal Circuit has stated that “[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 Fitch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 773 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 1085,
1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs., Inc. v, Garlock, Inc.,
721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). Therefore, we agree with Appellants that the suggested combination of Haraguchi and
Ishikawa is improper.
Even assuming that the combination of Haraguchi and Ishikawa is proper, the Examiner's
combination still does not meet the limitation, "the control means including means . . . for transferring the
control data . . . so as to protect data from disruption due to static electricity." [Claim 2, lines 9 to 17].
The Examiner contends that “[s]uch a combination [of Haraguchi and Ishikawa] would inherently
protect the temporally [sic] stored data because of its responsiveness to the opening and closing of the
door (the door providing a physical barrier to static electricity).” [Answer, page 7]. Appellants
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007