Appeal No. 1998-0524
Application No. 08/522,067
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 Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
As pointed out above, the Examiner’s rejection lacks
motivation to remove the accumulator from Ando. Shipnes does
not cure the deficiencies of Ando. Shipnes was merely relied
upon to teach the use of the packed data format. This is not
disputed by Appellants.
Thus, in view of the above, we will not sustain the
Examiner’s rejection of independent claims 24, 25, 26 and 28.
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