Appeal No. 1998-0912
Application 08/413,521
The Examiner has not shown (or even alleged) that this is
deficient, nor that Bolton’s air space is superior.
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.
In view of the forgoing, we will not sustain the
Examiner’s rejection of claim 1. Independent claim 6 recites
the same unmet limitations, and likewise we will not sustain
the Examiner’s rejection of claim 6.
The remaining claims on appeal, all dependent, also
contain the above limitations discussed in regard to claims 1
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007