Appeal No. 2001-1556
Application 09/333,322
of the connector). The chip would physically lie on the step-
like portion of the connectors” [answer, pages 3-4].
We do not sustain the examiner’s rejection of claims 1-
13. It is clear from reading the examiner’s response to
appellants’ arguments in the brief that the examiner has
selectively chosen only a portion of LeMaire’s structure and only
a portion of Haghiri-Tehrani’s structure and combined these
selectively chosen structures in such a manner as to create
appellants’ invention. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We agree
with appellants that the examiner has identified nothing within
the teachings of LeMaire and Haghiri-Tehrani which would have led
the artisan to selectively combine their teachings in the manner
proposed by the examiner. The only rationale proposed by the
examiner simply identifies the advantages already disclosed by
appellants.
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