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. -11-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007