Appeal No. 1998-0252
Application No. 08/555,795
Manual of Patent Examining Procedures (MPEP) § 2144.03 (7th
ed., July 1998)), as it turns out this matter is not material
to our decision.
Our problem with this rejection resides in the lack of
proper suggestion to combine the teachings in the manner
proposed by the examiner. The mere fact that the prior art
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). That the elements of a claim exist separately in
the prior art is not enough. In the present case, there is no
teaching in the art of organizing files based upon the month
and day of the individual’s birth, much less that this be a
main set and that there be a subset based upon the letter of
the individual’s last name. We fail to perceive any teaching,
suggestion or incentive which would have led one of ordinary
skill in the art to combine the teachings of the admitted
prior art and Colavito in such a manner as to meet these
requirements, which are recited in independent claim 11, other
than the luxury of the hindsight accorded one who first viewed
the appellant’s disclosure. This, of course, is not a proper
7
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