Appeal No. 1997-2310
Application No. 08/329,945
would turn to Retter alone for still picture processing and to
Knee alone for motion picture processing.
To establish a prima facie case of obviousness, the
examiner must provide a reason why the skilled artisan would
have been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the
prior art as a whole or knowledge generally available to one
having ordinary skill in the art. In re Oetiker, 977 F.2d
1443, 1447, 24 USPQ2d 1443, 1446 (Fed. Cir. 1992); Uniroyal,
Inc. v. Rudkin-Wiley, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988). Merely that
the prior art can 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, 23 USPQ2d 1780, 1783-4 (Fed.
Cir. 1992). We agree with appellant that the examiner has
provided no such suggestion from the references to combine the
two different types of processing systems. In fact, as each
reference is limited to either JPEG or MPEG processing, if
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