Appeal No. 1998-1257
Application 08/337,095
of Lindmayer. According to the examiner, it is sufficient
that Lindmayer discloses the concept of using two remotely
transmitted control signals one of which affects the security
status of the vehicle and the other one does not. As for
which signal should have a greater range of transmission, the
examiner simply concludes that “that would be a matter of
design choice by the artisan” (Answer at 7). To characterize
a feature as a design choice is not meaningful in a proper
analysis of obviousness under 35 U.S.C. § 103. Essentially,
every feature is a design choice. Some choices and selections
take the invention as a whole out of the scope of obviousness,
and some do not.
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); 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 Mfg. Inc. v. SGS Importers Int’l
7
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