Appeal No. 1998-0624
Application No. 08/373,118
arguments, is a clear indication of the deficiencies of the
rejection. As noted supra, the applied art does not meet the
claim 1 limitations with respect to the required original
graphic image and the scanning using OCR, for all proffered,
and sometimes inconsistent, explanations. Although there is
no need to elaborate, we also find deficiencies in meeting
claim 1's reformatting step, and a sufficient motivation to
combine Hanson and Blaylock.
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.
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