Appeal No. 2002-0954 Page 5
Application No. 09/543,632
of a listing of synonyms and antonyms for the selected vocabulary word in addition to a
presentation of the use of the selected vocabulary word in sentences. As conceded by
the examiner (answer, page 3), however, Sorensen does not disclose presentation of
the use of synonyms of the selected vocabulary word in a sentence, much less the
same sentence in which the vocabulary word is used. While it might appear to involve
only a very simple modification of Sorensen’s device and method to present the usage
of one or more of the listed synonyms of the selected vocabulary word in the same
sentence(s) in which the selected vocabulary word is presented, we find no suggestion
in Sorensen to do so. The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested the desirability of
the modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir.
1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Even
when obviousness is based on a single prior art reference, there must be a showing of
a suggestion or motivation to modify the teachings of that reference. See In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). From our
perspective, the only suggestion for modifying Sorensen in the manner proposed by the
examiner is found in the luxury of hindsight accorded one who first viewed the
appellant’s disclosure. This, of course, is not a proper basis for a rejection. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
For the foregoing reasons, we conclude that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness of the subject
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007