Appeal No. 1997-1425
Application No. 08/520,228
is in the context of sheet steel, the sea, land masses, etc.
(column 6, lines 34-41). We see no rational, nor has the
Examiner suggested, why one would associate Jakeman with an
electrophotographic printing machine.
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
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
As pointed out above, Oshida does not disclose or
suggest, inherently or otherwise, the use of a surface
roughness detector in any type of recording device. Wong,
Courtney and/or Jakeman do not fill this void. Since there is
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