Appeal No. 1996-3152
Application No. 08/043,743
conclusion based on factual evidence (In re Fine, 837 F.2d
1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the mere fact
that such a result could occur does not serve as a proper
basis for concluding that such a modification would have been
obvious. Instead, it is well settled that in order to
establish a prima facie case of obviousness the prior art
teachings must be sufficient to one of ordinary skill in the
art to suggest making the modification needed to arrive at the
claimed invention. See, e.g., In re Lalu, 747 F.2d 703, 705,
223 USPQ 1257, 1258 (Fed. Cir. 1984). The examiner, however,
has provided no factual basis whatsoever for concluding that
the modification proposed would have been obvious. See, e.g.,
In re GPAC Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123
(Fed. Cir. 1995) and In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968)).
We have also carefully reviewed the APA and the Siegmund
patent additionally relied upon by the examiner in support of
Rejections (II) and (III), but find nothing therein that makes
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