Appeal No. 1998-2577
Application No. 08/594,054
disclosure with the encoded data blocks of Asada’s main
embodiment, stating “It would have been obvious to one of
ordinary skill in the art that the main embodiment of Asada et
al is based on the improvement of the prior art of Asada et
al, thus, it is clear that the prior art of Asada et al can be
combined with the main embodiment of Asada et al." (answer-
page 5).
We find the Examiner’s rational rather circular and
without motivation as argued by Appellants (brief-pages 9 and
10).
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
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
7
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