Appeal No. 1997-2567 Application 08/390,029 means of the primary prior art combination (France 2167536 taken together with Reetz) with openings of different cross sections and flow stopping means, in view of Hahn et al, since such would greatly increase the flexibility of the apparatus of the primary prior art combination” (answer, pages 5-6). In order for a prima facie case of obviousness to be established, the teachings from the prior art itself must appear to have suggested the claimed subject matter to one of ordinary skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the prior art could be modified as proposed by the examiner is not sufficient to establish a prima facie case of obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). The examiner must explain why the prior art would have suggested to one of ordinary skill in the art the desirability of the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783-84. 8Page: Previous 1 2 3 4 5 6 7 8 9 10 NextLast modified: November 3, 2007