Appeal No. 1997-3997
Application No. 08/559,117
supported by the teachings or suggestions of Bonine.
We essentially agree with appellants’ positions as set
forth in the brief. Although the examiner’s rejection
attempts to find rationales for modifying the applied prior
art, these rationales are all based on achieving appellants’
invention rather than on a suggestion 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 appellants that the only suggestion on
this record for modifying the device of Bonine in the manner
proposed by the examiner comes from appellants’ own
specification.
Since the applied prior art and the examiner’s
analysis do not establish a prima facie case of the
obviousness of the claimed invention, we do not sustain the
examiner’s rejection of independent claims 1 and 8 based on
Bonine taken alone. Since
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