Appeal No. 1997-2397
Application No. 08/061,286
be combined. This does not persuade us that one of ordinary
skill in the art having the references before her or him, and
using her or his own knowledge of the art, would have been put
in possession of the claimed subject matter.
Further, we are cognizant of the Examiner’s assertion
(Answer, page 6) as to the conventionality of using color
separation techniques for color printing. Notwithstanding the
merits of this contention, however, we find no convincing
reasoning supplied by the Examiner as to how and why the
skilled artisan would apply such color separation teachings to
the process described by Nickell. The 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). We are left to speculate why the skilled artisan
would modify the color conversion system of Nickell with the
color separation teachings of Geraci. The only reason we can
discern is improper hindsight reconstruction of Appellant’s
claimed invention.
We have considered the Dalrymple reference which was
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