Ex parte ESTEP et al. - Page 8




          Appeal No. 2000-0965                                                        
          Application No. 08/927,465                                                  


          instrument system of Fournier in some vague manner without                  
          specifically describing how the teachings would be combined,                
          nor how any such combination would satisfy the requirements of              
          appealed claim 1.    This does not persuade us that one of                  
          ordinary skill in the art having the references before her or               
          him, and using her or his own knowledge of the art, would have              
          been put in possession of the claimed subject matter.  The                  
          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).                                 
               A review of the Examiner’s analysis (Answer, page 4)                                                                 
          reveals an implied suggestion of the obviousness to the                     
          skilled artisan of moving the CPU from the instrument console               
          14 in Fournier to the person of the technician 21 in view of                
          the advantages associated with the wearability of modular                   
          computer components suggested by Janik.  We agree with                      
          Appellants (Brief, page 11), however, that, even if this                    
          modification of Fournier were made, the resultant combination               
          would not satisfy the claimed requirements.  Although the                   
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