Appeal No. 1999-2605
Application No. 08/788,669
feature, the Examiner nevertheless suggests (Answer, pages 4, 7,
and 8) the obviousness to the skilled artisan of modifying Bender
to provide such a feature. In particular, the Examiner points to
the discussion of the HOLD function (Bender, column 9, lines 9-
58) which permits an operator to interrupt the controlled process
to change the parameters of the system. In our view, however,
while it is conceivable that a myriad of system parameter changes
could be implemented by an operator during a system interruption,
the only motivation to provide the specific claimed automatic
pausing feature comes not from any disclosure in the Bender
reference but rather from Appellant’s own disclosure. 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).
Further, while the Examiner suggests (Answer, page 7) that
the claimed automatic pausing feature “ . . . is still an option
of Bender’s invention,” we find no evidentiary support on the
record for such a conclusion. The Examiner must not only make
requisite findings, based on the evidence of record, but must
also explain the reasoning by which the findings are deemed to
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007