Ex parte NASVIK et al. - Page 6




          Appeal No. 1997-0635                                       Page 6           
          Application No. 08/375,183                                                  


          USPQ2d 1955, 1956 (Fed. Cir. 1993).  A prima facie case of                  
          obviousness is established by presenting evidence that would                
          have led one of ordinary skill in the art to combine the                    
          relevant teachings of the references to arrive at the claimed               
          invention.  See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d                   
          1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,               
          1016, 173 USPQ 560, 562 (CCPA 1972).  In addition, 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                     
          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).                                           


               The appellants argue (brief, pp. 4-8, and reply brief,                 
          pp. 1-3) that the applied prior art does not suggest the                    
          claimed subject matter.  We agree.  Specifically, the                       
          limitations of claim 4 are not suggested by the applied prior               
          art.  In that regard, while various mosaic pieces of the                    
          claimed invention are shown in each reference of the applied                







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