Appeal No. 2003-0508 Page 6
Application No. 09/449,023
does not specifically address how the disclosed table top
supporting gas spring assembly of Gertel would have suggested a
modification of the anti-vibration stabilizers of Colvin which
are interposed between a chip and a video optical microscope in a
manner so as to arrive at the claimed subject matter.
While the examiner (answer, page 11) is correct that Gertel
suggests using their gas spring assembly for supporting a table
top that may include equipment, such as an electronic microscope
thereon, that disclosure does not establish why one of ordinary
skill in the art would have been led to employ the gas spring
assembly of Gertel in conjunction with the integrated circuit
testing system of Colvin in a manner so as arrive at the here
claimed subject matter with a reasonable expectation of success
in so doing.
It is well settled that the mere fact that prior art may be
modified to reflect features of the claimed invention does not
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Rejections based on
§ 103(a) must rest on a factual basis based on the teachings of
the prior art. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Our
reviewing court has repeatedly cautioned against employing
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