Ex parte HURST et al. - Page 11




          Appeal No. 1998-2556                                                        
          Application 08/571,044                                                      


          the examiner does not support the obviousness rejection as                  
          formulated by the examiner.  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).  Grotz taken alone (with or without general                     
          knowledge) does not suggest transfer functions having the                   
          properties recited in claim 17.  The only basis for making the              
          modification proposed by the examiner comes from an improper                
          attempt to reconstruct appellants’ invention in hindsight.                  
          Therefore, we do not sustain the rejection of claims 17 and 21              
          based on Grotz taken alone.                                                 
          Although dependent claims 3, 6, 7, 11, 13 and 18-20                         
          are rejected using the additional teachings of Zdepski, Stott               
          or Ishii, none of these additional references overcomes the                 
          basic deficiency in Grotz discussed above.  Therefore, we also              
          do not sustain any of the rejections of claims 3, 6, 7, 11, 13              
          and 18-20.                                                                  


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