Appeal No. 2000-1675
Application No. 08/855,279
references so as to set forth a prima facie case of obviousness.
In particular, Appellant contends (Brief, pages 3 and 4) that,
although the Examiner has recognized that none of the applied
prior art references disclose a MR sensing element with a
circularly shaped sensing pattern as claimed, no supporting
evidence has been provided by the Examiner for the proposed
modifications of the prior art to arrive at the claimed
invention.
After careful review of the applied prior art in light of
the arguments of record, we are in agreement with Appellant’s
position as stated in the Briefs. 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).
As to the Examiner’s suggestion that the skilled artisan would
have been motivated to modify the sensing patterns of the applied
prior art to produce a circular sensing pattern, we find no
evidentiary support in the references relied upon, outside of
Appellant’s own disclosure, for such an assertion. The
Examiner’s conclusory statements that the skilled artisan would
know that making the suggested change in the shape of the
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