Appeal No. 1997-3930
Application 08/394,596
Appellants argue on page 12 of the brief, that one of
ordinary skill in the art faced with the problems solved by
Appellants would not look to Silvus or Minekane to solve the
problem of determining the specific identity of hydrocarbons
in water. Appellants argue that Schnell's claimed invention
measures the evanescent spectrum of hydrocarbons to identify
the hydrocarbon and this is not suggested by the prior art.
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)). The Federal Circuit
reasons in Para-Ordnace Mfg. Inc. v. SGS Importers Int'l Inc.,
73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir.
1995), cert. denied, 519 U.S. 822 (1996), that for the
determination of obviousness, the court must answer whether
one of ordinary skill in the art who sets out to solve the
problem and who had before him in his workshop the prior art,
12
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