Appeal No. 1998-0618 Application 08/288,194 were to decide to decrease Rothfjell’s 45E angle, why would one stop at 10E. Nothing in Rothfjell (nor Kado) suggests additional photographs at decreased angles, nor a lower limit of the claimed 10E. Only Appellants’ disclosure makes these suggestions. 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, there is no teaching or suggestion of record to take images at the claimed 10E/40E 9-9-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007