Appeal No. 1998-1317
Application No. 08/522,112
paragraphs; distribution of word size; and average frequency
of letter occurrence alleged as missing by Appellant.
On page 10 of the brief, Appellant argues that the
references fail to provide motivation to combine their
disparate teachings to meet the claimed limitations. Examiner
in response directs attention to the Final Rejection
reproduced in the answer.
The Federal Circuit states that “[t]he mere fact that
the prior art may be modified in the manner suggested by
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
10
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