Appeal No. 1997-1053
Application No. 08/432,291
The examiner has not established any convincing reasoning
or evidence why one of ordinary skill in the art would have
added a filter, as recited in the claimed subject matter on
appeal, in the process of Tam. Appellants have not contested
the examiner’s finding that such filters as recited in the
claims on appeal were well known in the art. However, the
mere fact that these filters were well known does not suggest
the desirability of incorporating these filters into the
process of Tam, absent a suggestion, motivation or reason for
this combination. See C.R. Bard, Inc. v. M3 Sys., Inc., 157
F.3d 1340, 1361, 48 USPQ2d 1225, 1240 (Fed. Cir. 1998)(“The
ultimate question is whether, from the evidence of the prior
art and the knowledge generally available to one of ordinary
skill in the relevant art, there was in the prior art an
appropriate teaching, suggestion, or motivation to combine
components in the way that was done by the inventor.
[Citations omitted]”); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984)(“The mere fact that the prior
art could be so modified would not have made the modification
obvious unless the prior art suggested the desirability of the
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