Appeal No. 1998-0819
Application 08/541,656
the Examiner’s findings that Hinlein shows in figure 1 a
curved portion, element 28, in a linear portion, element 24,
and tabs, element 50, mounted on the linear edge of the
curvilinear portion.
On page 6 of the brief item (6), and in the argument
section pages 7 and 8 of the brief, Appellants argue that
while the Appellants conceded that the elements claimed
individually are old, Appellants maintain that the combination
is not suggested by the prior art. Appellants argue that it’s
only the Appellants’ specification that provides the
motivation to rebuild Foote’s head suspension assemblies as
what was done in the Examiner’s final rejection and thus is
improper use of hindsight.
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). It is further
7
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