Appeal No. 1999-2248
Application No. 08/960,255
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
1553, 220 USPQ at 12-13. In addition, our reviewing court
requires the PTO to make specific findings on a suggestion to
combine prior art references. In re Dembiczak, 175 F.3d 994,
1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
Firstly, the findings of Section A above, regarding the
limitations of claims 1 and 7 which are not present in the
admitted prior art, apply equally to these dependent claims.
Secondly, the Examiner has not provided any evidentiary
basis or cogent reason to select the particular modes of
welding claimed by Appellants. We are not inclined to
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