Appeal No. 1999-1960
Application No. 09/075,631
As to the view that it would have been obvious to modify
Frantz in the proposed manner by the examiner because it would
merely involve the elimination of the cycled operation with
the consequent loss of function of the cycled operation, it is
true that in In re Karlson, 311 F.2d 581, 584, 136 USPQ 184,
186 (CCPA 1963) the Court stated that “omission of an element
and its function in a combination is an obvious expedient if
the remaining elements perform the same functions as before.”
The Court recognized, however, that this is not a mechanical
rule, and that such language in Karlson was not intended to
short circuit the determination of obviousness mandated by 35
U.S.C.
§ 103. See In re Wright, 343 F.2d 761, 769-70, 145 USPQ 182,
190 (CCPA 1965). Thus, as in reviewing any obviousness
determination, we must first look to the prior art and
ascertain whether the prior art teachings would appear to be
sufficient to one of ordinary skill in the art to suggest
making the claimed modification proposed by the examiner.
See, for example, In re Lalu, 747 F.2d 703, 705, 223 USPQ
1257, 1258 (Fed. Cir. 1984). Here, for the reasons discussed
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