Ex parte LANDA et al. - Page 8




          Appeal No. 1997-2118                                                        
          Application No. 08/119,163                                                  


          FLEMING, Administrative Patent Judge, Dissenting:                           

               While I appreciate the position of the Majority, I would               
          have affirmed the rejection of claims 36, 39, 43, 45, 47, 49,               
          51 and 53 under 35 U.S.C.  103 as being unpatentable over                  
          Landa and Uhlig.                                                            
               The Majority has not disputed that the Examiner has shown              
          that the combination of Landa and Uhlig teaches all of the                  
          claimed structure recited in Appellants' claims.  Thus, the                 
          only issue is whether the Examiner properly found a suggestion              
          in the prior art to combine Landa and Uhlig.  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).  It is further established that                
          "[s]uch a suggestion may come from the nature of the problem                
          to be solved, leading inventors to look to references relating              
          to possible solutions to that problem."                                     

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