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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