Appeal No. 1996-2470
Application 08/192,488
facie case of obviousness to be established, however, the
examiner must explain why the teachings from the prior art
itself appear to have suggested the claimed subject matter to
one of ordinary skill in the art. See In re Rinehart, 531
F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact
that the prior art could be modified as proposed by the
examiner is not sufficient to establish a prima facie case of
obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783 (Fed. Cir. 1992). The examiner must explain why
the prior art would have suggested to one of ordinary skill in
the art the desirability of the modification. See Fritch, 972
F.2d at 1266, 23 USPQ2d at 1783-84. Such an explanation has
not been provided by the examiner. Consequently, we do not
sustain the examiner’s rejection.
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