Appeal No. 2002-2110 Page 7
Application No. 09/224,748
the examiner asserts, "the presence of imaging computer 42 and the use of image
processing techniques to aid analysis and interpretation (column 3, lines 45-47) is
suggestive . . . that the location of the mechanical surface anomalies determined with
system 36 may be analyzed by computer 42 and the dimensional values calculated to
better implement the manufacturing process." (Id.) The appellants argue, "there is no
teaching or suggestion found in either reference of the claimed . . . 'calculating'
operations. . . ." (Appeal Br. at 8.)
"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
record." Id. at 1343, 61 USPQ2d at 1434. Although couched concerning combining
prior art references, we hold the same requirements apply to modifying such a
reference.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007