Appeal No. 1998-0296
Application 08/431,312
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 at 1266 n.14, 23 USPQ2d at 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d at 902, 221
USPQ at 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance, 73 F.3d at 1087,
37 USPQ2d at 1239, citing W. L. Gore & Assocs., 721 F.2d at
1551, 1553, 220 USPQ at 311, 312-13. In addition, our
reviewing court requires the PTO to make specific findings on
a suggestion to combine prior art references. In re
Dembiczak, 175 F.3d at 1000-01, 50 USPQ2d at 1617-19 (Fed.
Cir. 1999).
We are not inclined to dispense with proof by evidence
when the proposition at issue is not supported by a teaching
in a prior art reference or shown to be common knowledge of
unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
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