Appeal No. 1998-0073
Application 08/273,813
compresses between the top and bottom housings to form a
“water tight housing” and a “sealed environment within the
housing.” The Examiner further points out that it would have
been obvious to one of ordinary skill in the art to modify the
portable computer of Hsieh with the sealing gasket of Chadima.
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-Ordnance 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,
would have been reasonably expected to use the solution that
is claimed by the Appellants.
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