Appeal No. 1998-1677
Application No. 08/273,251
some form of direct transfer process. Appellant argues that
there is no hint or suggestion in Grindley that it would be
compatible with, or benefit by, contact duplication.
Appellant further argues that the Examiner is suggesting that
if the teachings of Kanematsu be applied to those of Grindley,
it would result in wholesale replacement of Grindley's
playback and recording heads, and associated electronics, with
Kanematsu's contact recording apparatus. Appellant argues
that this would undermine one of Grindley's stated and claimed
points of novelty in that it would preclude Grindley's use of
a common capstan.
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
established that "[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
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