Appeal No. 1999-0890
Application 07/575,096
In the answer8 the Examiner argues that the motivation for
modifying Dunkley with the teachings of Iggulden is to reduce the
potential for improper placement or inadvertent movement of the
credit slip on the Dunkley device, thereby preventing incomplete
signatures and digitization. The entry of data on a
pre-established displayed form directly on the screen as taught
by Iggulden thus prevents this inherent design problem of
Dunkley.
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 reviewing court requires the PTO
8At page 4
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007