Appeal No. 1998-2046
Application No. 08/787,332
and 13 (answer-page 4). It appears that the Examiner is
ignoring the fact that insulator 401 has no difference in
thickness as required by claim 1. However, in response to
Appellants’ brief, the Examiner further notes APA Figure 28
(answer-page 6) and Kwansnick (answer-page 7). The Examiner
provides no explanation as to how these citations would be
combined to meet the requirements of claim 1. Moreover,
Kwansnick was never directly applied against claim 1.
Additionally, as argued by Appellants (brief-pages 8 and 9),
the Examiner has not indicated how APA would be modified, or
how Figures 18-29 would be combined, to arrive at Appellants’
claimed invention.
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
9
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