Appeal No. 1997-0800 Application No. 08/382,926 position through at least a corresponding one of said first and second rotated positions; (emphasis added) because Darroch does not have two ON states, an initial position, and two corresponding rotated positions. Kramer does not supply these missing limitations since it was cited for its “direction sensor” (answer-page 4) and it is unclear how one would combine Kramer with Robinson and Darroch. Darroch has been used to replace Robinson’s fingertip switches, 16a-16e, and now Kramer is proffered by the Examiner to replace the same switches, 16a-16e. If Kramer now replaces switches 16a-16e, what happens to Darroch? The Federal Circuit states that "[t]he 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, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be established using hindsight or in view of the teachings 8Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007