Appeal No. 1999-1143
Application No. 08/735,925
establishes that it is possible to reproduce the here claimed
method and product by appropriately selecting and
appropriately combining particular materials from patentee’s
extensive listings. However, the mere fact that the prior art
could be modified so as to result in a claimed invention would
not have made the modification obvious unless the prior art
suggested the desirability of the modification. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). For
this reason and because we agree with the appellants that
Obayashi would not have suggested the aforementioned
selections and combinations needed to achieve the here claimed
invention, we also cannot sustain the examiner’s section 103
rejection of claims 22, 23, 26-28 and 31-34 as being obvious
over Obayashi.
As correctly argued by the appellants, the above
discussed deficiency of Obayashi is not supplied by the
Yoshikawa or Benko references, and the examiner has not relied
upon these references for this purpose. It follows that we
cannot sustain the examiner’s section 103 rejection of claim
27 over Obayashi in view of Yoshikawa or Benko or his section
103 rejection of claim 29 over Obayashi in view of Benko.
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