Appeal No. 1999-2032 Page 6
Application No. 08/661,303
The appellants argue (brief, pp. 8-10) that there is no
motivation in the applied prior art for combining the
teachings of Ahlberg and Esmer to arrive at the claimed
invention. We agree. The mere fact that the prior art may be
modified in the manner set forth by the examiner does not make
the modification obvious unless the prior art suggested the
desirability of the modification. See In re Fritch, 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).
Thus, teachings of the applied prior art can be combined
only if there is some suggestion or incentive to do so. Here,
the applied prior art contains none for the reasons set forth
on pages 8-10 of the brief. In our view, the only suggestion
for modifying Ahlberg in the manner proposed by the examiner
to arrive at the claimed invention stems from hindsight
knowledge derived from the appellants' own disclosure. The
use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible.
See, for example, W. L. Gore and Associates, Inc. v. Garlock,
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007