Appeal No. 1998-1893
Application 08/088,125
500µ (0.020") (col. 6, lines 9-11).
The examiner argues that “[t]o modify Macpherson and
substitute one conventional sheet forming substance for another
conventional sheet forming substance for its art recognized and
appellant’s intended function would therefore have been obvious
in view of the art [Macpherson, the METHOCEL references and
Wittwer] taken as a whole” (answer, page 8).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must appear
to have suggested the claimed subject matter to one of ordinary
skill in the art. See In re Rinehart, 531 F.2d 1048, 1051, 189
USPQ 143, 147 (CCPA 1976). The mere fact that the prior art
could be modified as proposed by the examiner is not sufficient
to establish a prima facie case of obviousness. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir.
1992). The examiner must explain why the prior art would have
suggested to one of ordinary skill in the art the desirability of
the modification. See Fritch, 972 F.2d at 1266, 23 USPQ2d
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