Appeal No. 1997-3960
Application 08/249,700
Appellant argues that the examiner has failed to
establish a prima facie case of obviousness. More specifically,
appellant argues that the examiner has simply dismissed all the
differences between the claimed invention and the teachings of
the prior art as obvious within the meaning of 35 U.S.C. § 103
without any teaching or suggestion within the applied references
[brief, pages 5-13]. Appellants argue that the examiner’s
rejection is nothing more than an attempt to reconstruct the
invention using hindsight.
We essentially agree with appellant’s position as set
forth in the main brief. Although the examiner’s rejection
attempts to find rationales for modifying the applied prior art,
these rationales are all based on achieving appellant’s invention
rather than on suggestions coming from the prior art. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). We agree with appellant that the only suggestion on this
record for modifying the disc cartridge of Motoyama in the manner
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