Appeal No. 1999-2614
Application No. 08/667,826
of high resolution color graphic images as motivation for the
skilled artisan to modify Grunewald with Sone, we find no
indication from the Examiner as to how such a combination would
accomplish the desired result. 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
support the conclusion of obviousness. See In re Lee, 277 F.3d
1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002). In our
opinion, any suggestion to modify the disclosure of Grunewald to
add the plural instruction generating feature of Sone could only
come from an improper attempt to reconstruct Appellants’
invention in hindsight.
Accordingly, since the Examiner has not established a prima
facie case of obviousness, the rejection of independent claims 1,
8 and 16, as well as claims 2-7, 9-14 and 17 dependent thereon,
over the combination of Grunewald and Sone is not sustained.
Turning to a consideration of the Examiner’s obviousness
rejection of independent claims 15, 18, 20, and 22 and dependent
claims 19 and 21, we do not sustain this rejection as well for
all of the reasons discussed supra. In addition, we find no
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