Appeal No. 2002-0230
Application No. 09/136,070
identified above. The mere fact that the prior art could be modified as proposed by
the Examiner is not sufficient to establish a prima facie case of obviousness. See In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
We agree with Appellants that the Examiner’s conclusion that it would have
been obvious to move the location of the connection hole to the bottom of the reagent
container of Rokugawa is unsupported by any teaching in the prior art. (Brief, p. 5).
The Examiner asserts “[i]t would have been obvious to one having ordinary skill in
the art at the time the invention was made to have locate the connection hole at the
bottom of the reagent container in order to allow the reagent to be dispensed under the
force of gravity, thereby eliminating the need for extra pressure head.” (Answer,
paragraph bridging pages 4 -5). Additionally, the Examiner asserts “the location at
the bottom-most surface of the reagent container ensures that the entire reagent is
removed.” (Answer, p. 6). The record indicates that the motivation relied upon by
the Examiner for moving the location of the connection hole comes from the
Appellants’ description of their invention in the specification, pages 16-18, rather
than coming from the applied prior art and that, therefore, the Examiner used
impermissible hindsight in rejecting the claims. See W.L. Gore & Associates v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983); In re
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