Appeal No. 09/938,479 Page 4
Application No. 2003-2047
electrically transmittable signals denoting the position of a pen
or pointer can be sent or recreated at a local or remote
utilization device. According to the examiner, the proposed
modification of Louis would allow for remote reading of the flow
chart (meter).
Appellant (brief, pages 5-8) argues that Rodgers at column
2, lines 32-37 makes it clear that the digitizer apparatus
disclosed is for use in “systems using light pens, trackballs,
and joy sticks for CRT (cathode ray tube) cursor control” and
would not have suggested a modification of the disparate complex
chart recorder of Louis that includes linear and rotational
sensors and a calculator to perform fluid flow calculations
(drawing figure 9) in a manner so as to arrive at the appellant’s
claimed subject matter.
We agree with appellant. 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
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007