Appeal No. 1998-0695
Application 08/400,320
applied prior art.
We again agree with the position argued by appellant.
Although the examiner has attempted to find a beneficial
result in relocating the bonding pads of Tanaka below the top
of the stator poles, there is nothing in Tanaka or Crapo which
suggests that this modification would be desirable or
necessary. 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). On this record, the only basis to make the relocation
suggested by the examiner is to improperly reconstruct
appellant’s invention in hindsight. Therefore, we do not
sustain the examiner’s rejection of claim 9.
In conclusion, we have not sustained either of the
examiner’s rejections of the claims under 35 U.S.C. § 103.
Therefore, the decision of the examiner rejecting claims 1 and
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