Appeal No. 1997-2391
Application 08/239,265
We have no doubt that the prior art could be modified in the manner proposed by
the examiner, but the fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification. In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Here, we find no
reason stemming from the prior art which would have led a person having ordinary skill to
the claimed invention. In our judgment, the only reason or suggestion to combine the
references in the manner proposed by the examiner comes from appellants’ specification.
Accordingly, we reverse the rejections of claims 1 through 7, 10 through 13, 15 and
16 under 35 U.S.C. § 103.
In addition to Loken and Kansas, the examiner relies on Basch in rejecting claims 8
and 9 under 35 U.S.C. § 103. Basch does not remedy the underlying
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