Appeal No. 1999-1051 Page 6
Application No. 08/652,740
tension components by filling the casing in which all are contained with insulating resin, and
Lister, which discloses a transistorized fuel burner ignition system in which a transformer is
“potted” in a suitable epoxy, for unspecified reasons.
The examiner has taken elements from each of the above-described references
and combined them in such a manner as to meet the terms of the claims, apparently based
upon the fact that the individual elements recited can be found in the prior art and such
premises as the electrical circuit in Kaduki “appears to be spaced or remote” from the
transformer and spark gap and the claimed arrangements “would have been obvious” for
various reasons (Answer, pages 5 and 6). However, the mere fact that the prior art
structure could be modified does not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). From our perspective, there is no teaching, suggestion or
incentive which would have led one of ordinary skill in the art to pick and choose certain
elements from each of the three secondary references and then incorporate them into the
Kaduki system in the manner proposed by the examiner other than the hindsight afforded
one who first viewed the appellant’s disclosure. This, of course, is not a proper basis for a
rejection under 35 U.S.C. § 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992).
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