Appeal No. 1997-1503 Page 8
Application No. 08/422,649
Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984)). The
mere fact that prior art may be modified as proposed by an
examiner does not make the modification obvious unless the
prior art suggested the desirability thereof. In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992); In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
Here, the examiner admits, “Lind et al. does not teach
the claimed door that allows a large amount of cartridges to
be entered into the device . . . . ” (Final Rejection at 3.)
He does not pretend that Tatsuta teaches or suggests the
feature. Instead, the examiner relies on Jenkins.
The examiner errs, however, in determining the content of
the Jenkins reference. At the outset, he asserts that
reference’s “drums (40), stacks (44) and chute (36) are deemed
to make up the claimed ‘cell unit’ . . . . ” (Final Rejection
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