Appeal No. 1998-1181
Application No. 08/442,883
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
We find that the Examiner's contention that it would have
been obvious to modify the Blair memory system by providing
the teaching of the Krollop memory system to be without
adequate foundation. The benefits of better cellular
selection and cheaper rates are disclosed by both references
and the instant application, and are not an adequate basis for
the Examiner's specific combination of certain teachings of
each of the references.
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, 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
20
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007