Appeal No. 2000-0810
Application 08/699,412
reference may be modified to result in a claimed invention does not render the
modification obvious unless the prior art suggested the desirability of the modification.
In re Fritch, 972 F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992).
For the foregoing reasons, the rejection of claims 1-20 under 35 U.S.C. § 103 as
being unpatentable over Kucera and Ejiri cannot be sustained.
We commend the examiner’s efforts in other parts of the rejection and answer,
particularly that explaining, correctly, to the appellants that the test for obviousness is
what the combination of prior art teachings would have suggested to one with ordinary
skill in the art, not whether the parts of one prior art system may be bodily incorporated
into the structure of another without affecting the latter’s operation. There is no
requirement that the original system of either prior art must be preserved or improved
by the results of the proposed combination. That is not the goal. Teachings from a
reference are not limited to the preferred embodiments of the reference or even the
invention any prior art patent is attempting to protect. Rather, a prior art reference is
good for all that it fairly discloses by way of technology, as viewed from the perspective
of one with ordinary skill in the art.
Conclusion
The rejection of claims 1-20 under 35 U.S.C. § 103 as being unpatentable for
obviousness over Kucera and Ejiri is reversed.
REVERSED
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