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 appliedPage: Previous 1 2 3 4 5 6 7 8 9 10 11 12 NextLast modified: November 3, 2007