Appeal No. 2001-2579 Page 15
Application No. 08/885,996
comparing is well known prior art for a certain purpose."3 (Id.) The appellant argues
that Sasaki does not "show that the 'interpreter-identification data' received from the
printer with the 'inquiry signal' transmitted to the printer, are compared. . . ." (Reply Br.
at 13.)
Claim 4 specifies in pertinent part the following limitations: "(a) transmitting form
values corresponding to data processing forms of said printer to said printer as check
data each time a print request occurs; (b) receiving said check data and storing said
check data in a memory in the printer. . . ."
"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,
1784 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984)). "[T]he factual inquiry whether to combine references must be
thorough and searching." McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52,
60 USPQ2d 1001, 1008 (Fed. Cir. 2001). This factual question cannot "be resolved on
subjective belief and unknown authority," In re Lee, 277 F.3d 1338, 1343-44, 61
USPQ2d 1430, 1434 (Fed. Cir. 2002); "[i]t must be based on objective evidence of
3The "certain purpose" is unspecified.
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