Appeal No. 1998-2565
Application 08/481,455
merely an intended use (answer-pages 5 and 6). We disagree
and find that Appellants' claims positively recite structure
and method steps that are not met by the Examiner’s rejection.
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). Since there is no
evidence in the record that the prior art suggested the
claimed combination
of claims 1 and 7, we will not sustain the Examiner’s
rejection of these claims.
The remaining claims on appeal also contain the
above limitations discussed in regard to claims 1 and 7 and
thereby, we will not sustain the rejection as to these claims.
CFR
§ 1.192(c)(7), 60 FR 14518, Mar. 17, 1995.
-7-
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