Appeal No. 1998-0998
Application 08/426,069
recess formed in a portion of a peripheral edge of the case adjacent and external to the
shutter since the Koyama recess is in the shutter itself.
We note that on page 5 of the Examiner's Answer the Examiner does agree that
Koyama does not disclose that the recess is defined by a cutout across the entire
thickness of the case as recited in Appellants' claims. The Examiner argues that it would
be obvious to one of ordinary skill in the art at the time the invention was made to extend
the recess across the entire thickness of the case for ease of manufacturing and to more
easily insert the unlocking member into the recess.
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). It is further established that "[s]uch a
suggestion may come from the nature of the problem to be solved, leading inventors to
look to references relating to possible solutions to that problem." Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir.
1996), citing In re Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA
1976)(considering the problem to be solved in a determination of obviousness). The
Federal Circuit reasons in Para-Ordnance Mfg. Inc. v. SGS Importers Int'l Inc., 73 F.3d
at 1088-89, 37 USPQ2d at 1239-40, that for the determination of obviousness, the court
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