Appeal No. 1997-2808
Application No. 08/313,129
‘alternates’” (reply brief-page 2).
Simply put, we agree with Appellants. The
Examiner’s analysis of Appellants’ specification to determine
what is important and what is not important has no bearing on
what Appellants have claimed as their invention.
The Examiner's argument that it would have been
obvious to modify Satomi to provide completely alternating
poles is simply unsupported by any evidence. 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). "Obviousness may not be established using hindsight or
in view of
the teachings or suggestions of the inventor." Para-Ordnance
6
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