Appeal No. 1999-0546
Application No. 08/724,542
examiner has failed to advance any factual basis to support
the conclusion that it would have been obvious to one of
ordinary skill in the art to provide the modification in the
manner suggested by the examiner. The Federal Circuit states
that "[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 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 773 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 Importers Int'l, 73
F.3d 1087, 37 USPQ 2d at 1239 (Fed. Cir. 1995), citing W. L.
Gore & Assocs., v. Garlock, Inc., 721 F.2d at 1551, 1553, 220
USPQ at 311, 312-13 (Fed. Cir. 1983).
The examiner's final rejection and answer only briefly
comment on the reason for suggesting the combination of
Bonnemasou and Crafton. The reason given by the examiner for
the combination of Bonnemasou and Crafton is "to reduce labor
7
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